Trademark Examination of Domain Names

Internet domain names have generated a number of questions that directly pertain to trademark law. For the Patent and Trademark Office (PTO), the question most commonly faced is whether a term which is a domain name can also be registered as a trademark.

The quick answer is that an Internet domain name that is used to identify and distinguish the goods and/or services of one person, from the goods and/or services of others, and to indicate the source of the goods and/or services may be registered as a trademark in the PTO. See 15 U.S.C. § 1127. Trademark applications for Internet domain names usually seek registration of service marks. Lately, the PTO has received an increasing number of applications to register Internet domain names.

In order to register an Internet domain name, an applicant must show that it offers services via the Internet. Further, specimens submitted in support of the application to show use of the mark must show use of the Internet domain name as a source identifier. The use of an Internet domain name as a mere directional reference, similar to use of a telephone number or business address on stationery, business cards, or advertisements, is not use of the name as a source identifier. See In re Advertising & Marketing Development, Inc., 821 F.2d 614, 620, 2 USPQ2d 2010, 2014 (Fed. Cir. 1987) ("It is not enough for the applicant to be a provider of services; the applicant also must have used the mark to identify the named services for which registration is sought"). Also, providing "a service which is normally 'expected or routine' in connection with the sale of one's own goods is not a registrable service." In re Dr Pepper Co., 836 F.2d 508, 509, 5 USPQ2d 1207, 1208 (Fed. Cir. 1987). By analogy with the registration of trade names, the more distinctive the presentation of the Internet domain name and the further it is physically removed from other informational data appearing on the specimen, the more likely the name will be perceived to function as a service mark. See In re Antenna Specialists Co., 408 F.2d 1052, 161 USPQ 284 (CCPA 1969).

Recently, the PTO has clarified how it administratively classifies services associated with the World Wide Web. "Identification and Classification of Certain Computer Related Goods and Services,"

The PTO uses the phrases "connection" provider, "access" provider, and "content" provider to differentiate and classify services rendered via the Internet. An entity providing the technical connection needed for communication is a "connection" provider—a service classified in Class 38 (Telecommunications). The closely-related service rendered by entities such as America Online®, CompuServe®, or Prodigy® is an "access" provider—a service classified in Class 42 (Computer Service). An "access" provider furnishes "multiple-user access to a global computer information network."

Most applicants will be "content" providers who furnish information via the Internet, i.e., offer the service of providing information. In such cases, the service offered is an information service classifiable according to the information provided, e.g., a service that offers business information is classified in Class 35, a service that offers financial information is classified in Class 36, and a service that offers building construction, repair or maintenance information is classified in Class 37.

However, all "content" providers do not offer registrable services vis-a-vis an Internet domain name. For example, Internet domain name locations that simply contain advertisements or other information normally expected or routine in promoting an entity's goods or services are not registrable services.

Therefore, Internet domain names must meet the same requirements for registration as all trademarks and service marks. 15 U.S.C. § 1051 et seq. If a domain name does meet these requirements, it will be registered.

Last Modified: 16 January 1998