Domain Names and Trademarks

Internet domain names raise some unique trademark issues.  A mark comprised of an Internet domain name is registrable as a trademark or service mark only if it functions as an identifier of the source of goods or services.  Portions of the uniform resource locator (URL) including the beginning, (“http://www.”) and the top level Internet domain name (TLD) (e.g., “.com,” “.org,” “.edu,”) function to indicate an address on the World Wide Web, and therefore generally serve no source-indicating function.  TLDs may also signify abbreviations for the type of entity for whom use of the cyberspace has been reserved.  For example, the TLD “.com” signifies to the public that the user of the domain name constitutes a commercial entity.  To the average customer seeking to buy or rent containers, "CONTAINER.COM" would immediately indicate a commercial web site on the Internet which provides containers. The addition of the word ‘Company’ to an otherwise generic mark only indicates that parties have formed an association or partnership to deal in such goods and does not render the generic mark registrable. 

If a proposed mark includes a TLD such as “.com”, “.biz”, “.info”, the examining attorney should present evidence that the term is a TLD, and, if available, evidence of the significance of the TLD as an abbreviation (e.g. “.edu” signifies an educational institution, “.biz” signifies a business).

Because TLDs generally serve no source-indicating function, their addition to an otherwise unregistrable mark typically cannot render it registrable. If a proposed mark is composed of merely descriptive term(s) combined with a TLD, the examining attorney must refuse registration on the Principal Register under the Trademark Act, on the ground that the mark is merely descriptive.

Similarly, if a proposed mark is composed of generic term(s) for the applicant’s goods or services and a TLD, the examining attorney must refuse registration on the ground that the mark is generic.