Does a domain name secure trademark rights to a name?
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Does a domain name secure trademark rights to a name?
I want to start a business though, a similar business name in another country is already using the name I want to use. Their name has an extra letter. “Let’s assume” their name is “Mode” and my will be “Mod.” But, they have not register it as a trademark. So, I want file the paperwork to claim the name and have sole ownership of it. Do they rights to the name even if they bought the domain first or can I still register it? We will be in the same field, if I choose to go with the name.
Asked on May 8, 2012 under Business Law, California
Answers:
SJZ, Member, New York Bar / FreeAdvice Contributing Attorney
Answered 11 years ago | Contributor
A domain name and trademark are not the same--but a domain name can help establish trademark rights. A trademark (or a service mark) is a name, logo, graphic, etc. used to identify the source of goods (or services). Someone can have a trademark even if the mark was never registered--registration is not a requirement for the existence of enforceable rights, but does offer certain advantages in terms of proving infringement or in terms of the damages or compensation one coud seek for infringement.
A trademark must be sufficiently original to be a valid mark. A trademark comes into being when a mark which would meet the requirements is used in commerce, to identify the source of goods or services. If the other company has been using their name in commerce to identify them as a source of goods or services, it may be a trademark, even if never registered. That's how a domain name can help establish a trademark--it shows use in commerce to identify the company's offerings.
A trademark is not automatically infringed, however, when someone has a similar, or even the same, name. Trademarks are infringed by uses that create a "likelihood of confusion" in potential customers. A key issue, therefore, is how similar are the products and their customer bases. For example, "Ace" as the name of a hardware store would not be infringed by "Ace" the casino development consulting firm, or "Ace" the flying school.
If you are in the same field and the way you will use you name could confuse customers as to whether products or services come from you or the other company, that could be trademark infringement, assuming they have been using their name in commerce is such a way as to credibly assert trademark rights. In trademark, being first to use a name is significant, and the first user generally gets the rights.
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