A trademark is a distinctive name, symbol, motto, or design that legally identifies a company or its products and services. Your domain name — the word or phrase that identifies your Web site (such as AllBusiness) — may qualify as a legal trademark if you use it in commerce or if you notify the U.S. Patent and Trademark Office (PTO) that you intend to use it in commerce.
Although you don’t need federal registration to establish your right to a particular trademark or to begin using a trademark, it’s still a good idea when it comes to a domain name. The Ninth Circuit U.S. Court of Appeals recently ruled that a business must use its domain name to sell goods or services in order to protect the name — even if a competitor starts to use the name after you registered the domain. In other words, merely reserving a domain name isn’t enough.
Fortunately, it’s easy to register your domain name as a trademark:
Conduct a trademark search. Before you register a domain name, conduct a trademark search to find any trademarks that conflict with the name you want. If the PTO declines your application to register a trademark because it conflicts with an existing trademark, the government will still charge the filing fee. You can do your own trademark search at the U.S. Patent and Trademark Office Web site, or you can hire someone to do it for you.
Note: It’s a good idea to do a trademark search even before you register your domain name, since domain registrars are not obligated to check if a requested name violates an existing trademark. In other words, getting the domain name you request says nothing about whether it will conflict with someone else’s trademark. And if you do receive a domain name that creates a trademark conflict, you could lose the right to it if the trademark owner takes legal action against you. Read Trademark Infringement for more information on this topic.
Fill out an application. There are three ways to apply for a U.S. trademark: one for applicants who have already used the mark in commerce (a “use” application); a second for those who haven’t yet used a mark in commerce but intend to do so (an “intent-to-use” application); and a third for applicants who live outside the United States and have registered the mark in another country. You can fill out any of these applications, check them for completeness and submit them over the Internet through the USPTO’s Trademark Electronic Application System.
Along with the application, you must provide a drawing of the mark on a separate paper and pay the filing fee. You must also provide three specimens for each class of goods or services that you sell if your application is based upon prior use of the mark in commerce.
About four months after you file an application, the PTO will review it and determine whether it can register the trademark.
Protect your trademark. To alert the public of your trademark rights, you can use the TM or SM (service mark) symbols. To use these symbols, you do not need to register your trademark (which means that your claim may or may not be valid). Once your trademark is registered with the PTO, you can use the ® symbol. For more information, be sure to read Using TM, SM, and Trademarks.
Your federal trademark registration lasts 10 years, with 10-year renewal terms. Between the fifth and sixth year after the initial registration, you must file an affidavit to continue the registration. If you don’t file, your registration is canceled. Your trademark rights can last indefinitely if you follow these steps and continue to use the mark to identify your goods and services.