Doing business on the Web doesn’t spare you from many of the same laws and customs that govern businesses in the physical world. You must pay especially close attention to trademark law, which governs disputes between business owners over the names, logos and trademarks that identify their goods and services in the marketplace. Applied to Web businesses, trademark law determines when the use of a particular Internet domain name infringes someone else’s trademark.
The two most fundamental rules of trademark law are:
- You can’t use a name, logo or domain name that might confuse customers about the source of your goods or services.
- You can’t use a name, logo or domain name that invokes a famous product or service, even if customers wouldn’t be confused.
Opening Your Doors to the World
Until several years ago, only companies doing business on a national or regional level needed to be concerned about trademark law. A local business could reasonably expect its marketing activities to be limited to a neighborhood, town, city or county. As long as the name used by the business to identify itself in the marketplace didn’t seriously conflict with names used by other local businesses, there was little likelihood of customer confusion and so, little likelihood of legal conflict.
Today, the core concept of “local” has all but disappeared for many types of businesses. When you create a Web page, you enter a commercial realm that is in one stroke local, national and international. Local customers can search you out, but so can anyone anywhere in the U.S. or the world who has a computer and an Internet connection. Suddenly, you must pay attention to how your business name–or the names of products you are offering–fit within the vast sea of names that is the new world marketplace.
What’s in a Name
The first trademark issue to arise when you create a Web page has to do with the name you give your Web site–called your Internet domain name. It’s the unique part of your Internet address (Universal Resource Locator or URL). The Nolo Press URL, for instance, is http://www.nolo.com. The last part–nolo.com–is the domain name. Naturally, most businesses want the domain name for their Web site to be the same as their business name, so that customers can easily find their sites.
Here’s where you can inadvertently court trademark trouble. If you choose a domain name that is the same or similar to a business name that is already in use as a trademark anywhere in the country (in physical or virtual space), you could find yourself in a trademark infringement dispute. If you are offering goods or services on your website, you could even be sued.
The entity responsible for assigning domain names does not check to see if a requested domain name violates an existing trademark. It is concerned only with whether the name is already taken as a domain name. In other words, being assigned the domain name you request says nothing about whether it will conflict with an existing trademark. If it is the same or similar to a famous mark or is likely to cause customers to confuse your site with the business or products carrying the existing mark, you could be in violation of trademark law.
If you do pick a domain name that creates a trademark conflict, you will most likely lose the name. Given the energy that goes into building domain name recognition, this could be a major blow to your business. Here’s what could happen:
- If your domain name prevents the owner of a registered trademark from using its mark as its domain name, the owner of the registered mark may be able to cause your domain name to be deregistered. If that happens, you can’t use it anymore.
- If your domain name is the same or similar to an existing famous mark, the mark’s owner may file a lawsuit preventing any further use of your domain name, even if customers wouldn’t likely be confused. For example, if you decide to call your health food website foramazons.com, the real amazon.com could probably force you to stop using the name, simply because it calls amazon.com to mind.
- If your domain name conflicts with an existing mark and will likely lead to customer confusion between your business or products and those offered by the mark’s owner, you may be forced to stop using the name. And if your infringement is judged to be willful, you might have to both compensate the mark’s owner for any losses and pay thousands of dollars in statutory damages.
Avoiding Trouble
Before choosing a domain name, it is wise to conduct what’s known as a trademark search. A trademark search hunts for any trademarks, federally registered or not, that conflict with your proposed domain name.
You can do your own trademark search at the U.S. Patent and Trademark Office Website, www.uspto.gov. Or you can pay someone to do it for you. One good trademark searcher is the Sunnyvale Center on Innovation, Invention and Ideas at www.sci3.com.
If possible conflicts turn up, use a variant of the golden rule. Do not use an existing mark as your domain name if use of the mark would seriously tick you off if you were the mark’s owner.
More About Domain NamesTechnically, no two domain names may be exactly the same. But because all businesses use the “.com” extension as part of their domain names, many newcomers to the Web find that the domain name they want has already been claimed. In response to this problem, an International Ad Hoc Committee created by an organization known as the Internet Society has come up with a plan to add seven new extensions:
As of January 1999, this hasn’t yet happened. |
PLEASE NOTE The information presented at MarketingToday is not legal advice, MarketingToday is not in the business of legal information, we are not lawyers, just publishers. We provide this information to help you understand the issues that we believe marketers should be aware of. We recommend that you consult a qualified attorney who specializes in trademarks, copyrights, advertising, intellectual property and the Internet for your questions or problems, we do.
