A domain name is simply a description of a computer's "location" on the Internet. They are important because they provide a means by which a company can uniquely identify itself on the Internet.

Because of this ability to uniquely identify a company on the Internet, domain names are similar to trademarks. The federal courts and the U.S.P.T.O. are reluctant to treat domain names as trademarks.

This area of law is changing weekly and it is difficult to keep this page current. The following scenarios present some of the difficult issues currently being resolved by the federal courts and the U.S. Patent and Trademark Office.

1. A small company is being threatened with suit because they have the domain name XYZ.COM. XYZ is the abbreviation for the small company. They are threatened by a large company XYZ that makes goods in a different industry. XYZ company has registered the trademark XYZ. What legal basis does the large XYZ have to claim trademark infringement?

2. A small computer business owns ABC.COM for its domain name. A large game company has developed a game entitled ABC and has obtained federally trademarked ABC. The game company now claims that they have rights to ABC.COM. Who wins?

3. The Internet is used around the world, yet trademarks extend only in the country in which they are registered. How do you obtain world-wide trademark protection and what happens when a foreign company begins to use a domain name that infringes a U.S. trademark?

4. How are the courts treating individuals or companies that simply reserve domain names with no intention of ever using the domain name?

5. Can domain names that use my surname (i.e. DEANCRAINE.COM) be protected by a trademark application?

6. What impact does filing the trademark on the Supplemental rather than the Principal Register in infringement disputes with the domain name user?

7. The application requirements for trademarks comprising a domain name ore more demanding than standard trademark applications. Why?

If you would like to discuss the above scenarios or a similar scenario, or if you have general questions, please feel free to call our office at (425) 637-3035 or E-Mail us at dac@nwpatents.com.