Can a domain be trademarked?
Can a domain be trademarked?
Entrepreneurs often wonder if their domain names can be trademarked or if there is a requirement to trademark their domain name. In this article, we address this FAQ with examples.
General Rule
Domain names are written representation of an internet address or ip address. Hence, it is common for businesses involved in ecommerce to spend significant amount of money for the building of brand name around a domain name. Such businesses or those wishing to trademark a domain name can apply for the same by filing a trademark application as a wordmark. And, it is permissible under the Trademark Act to allow for a domain name to be trademarked. However, just because a domain is registered does not make the mark eligible for trademark registration. The key test applied by the Trademark Examiner would be whether the wordmark proposed would be liable for registration, not simply as a domain name.
While processing of the application, the Trademark Registrar would still subject the application to usual criteria and tests for registration of trademark. The elements of a domain name included as a part of the application would be not considered and only the reminder or the distinct part of the mark is considered.
Example
If an application is made for the registration of amazon.com or amazon.in, the trademark examiner would not consider domain elements like .com or .in and would only consider the word “amazon”. If that word passes the normal tests for objection like similar or identical trademark exists or other reasons, then the mark is cleared for publishing in the Trademark Journal.
Further, in some cases, even words that are not eligible for registration as a word mark may be eligible for registration as a domain name, as there is no space in between the words and the addition of .com gives a character to the mark. For example, Fast Forward may not be eligible for trademark registration, but fastforward.com could be eligible for registration.
Proving Distinctiveness
While submitting an application for registration of trademark for domain name, the applicant can show evidence in the form of a website offering goods or services for sale under the brand. The website and display of goods or services under the brand can be used to prove trademark use and distinctive character as a trademark.
