The Trademark LawTrove provides some Frequently Asked Questions and answers about the United States laws of trademarks and their registration. These FAQs are not intended as legal advice: The trademark laws change frequently as new cases are decided and statues are enacted. Consult your own attorney regarding any question you may have that is specific to your situation:
Usually within the United States, trademark rights are reserved to either the first party to have begun publicly using the mark, or the first party to file an application with the U.S. Patent and Trademark Office, whichever occurs first. The most typical means of public use is the sale of a product or service bearing the mark. Other acceptable means may include product display or distribution of literature at a trade show, a presale announcement, display on a Web site, or soliciting and accepting customer orders.
The filing date of a U.S. application generally serves as one's priority date (barring the existence of an unregistered, conflicting prior user), and the application will appear quickly on databases of pending applications, thus warning potential competitors of the use and filing date. Also, by treaty, a foreign registrant may establish priority over a U.S. first user simply be filing an application within 12 months of its foreign filing date. Filing an intent-to-use registration with the U.S. Patent and Trademark Office after a careful search for registered and unregistered conflicting uses therefore nearly always serves as the most prudent means to establish the right to use a mark.
Whether or not you file an application prior to the first sale under your mark, you ought to keep careful records of your actual first sale, and of all subsequent sales. The bill of lading or invoice for your first shipment will document a date of use in the event of a challenge from a conflicting user. Documentation of Immediate, wide sales of your product may also serve as useful evidence to persuade your trademark Examiner that you mark has acquired a sufficient amount of secondary meaning to enable an otherwise descriptive mark to be registered.
Your domain name certainly can constitute a mark depending on how it is used. The best approach is to use your company name if that is available. If it is not available, and you have to choose a different domain, your domain will be considered a mark if it is promoted on your site as a way to transact electronic commerce.
Domain names are often service marks. If your company is a service firm such as a consulting, law or accounting firm, your site probably serves as an electronic brochure advertising your services. The trademark office allows brochures as evidence of use as a service mark. Therefore, your site could be used as a specimen to register your domain name as a service mark.
Institute a regular policy to archive copies of your domain uses or initial displays of other marks on your Web page. Since computer records may be erased and recorded over easily, it is quite likely that your earliest use of a domain as a service mark or to display other trademarks may be lost unless you made a concerted effort to save it. Regular, archived tape backups are one way to archive your Web page. The safest policy is to send these tape backups to a third party escrow agent before a challenge arises. The agent can testify as to the date of your tape in the event of a dispute over date of first use of one of your marks.
The interaction of domain names with trademarks is very complex, and you would best advised to consult your attorney about any specific question. Here are some considerations to take into account, however:
- The domain name registering authorities require all applicants for a second level domain name to agree in advance to a dispute resolution procedure whereby the owner may have to relinquish its registration to any owner of a trademark that is identical or confusingly similar to the applicant's second level domain name, and whose first use date pre-dates the applicant's first use date. (see www.swiggartagin.com/trademark/domain.html). This argues for registering your domain name as a trademark. Otherwise, you may lose your domain to the owner of a trademark registration that is identical to your domain name registration if his use predates yours.
- The allure of descriptiveness has invaded on-line commerce in a big way. Many newly popular, commercial domains are descriptive, e.g. golf.com (a guide to golfing resources), drugstore.com (sales of pharmaceutical products) etoys.com (sales of toys). The attraction of these domains is that they may be found readily by the casual surfer who simply enters the word in his browser in the hope of a random hit. However, their long term value as marks is less clear.
- The descriptive domain may not be protectible under trademark law. In a decision dated December 13, 1999, a federal district court in California denied a preliminary injunction sought by E-CARDS.COM, an on-line greeting card company, against competitor using the domain name of ECARDS.COM. The court denied the injunction on the ground that the plaintiff had failed to demonstrate a likelihood of success on its claim that it domain mark was valid and nongeneric.
- The descriptiveness allure continues. Another competitor in the same field of electronic greeting cards, formerly known by the nondescriptive domain GREETSTREET.COM, has since changed to the more descriptive EGREETINGS.COM.
First use for the purpose of registering your mark, and for the purpose of establishing priority over conflicting users occurs when it is used in "commerce." Commerce is defined under the U.S. Trademark Act, 15 U.S.C. §1127, as all commerce which may lawfully be regulated by Congress, meaning interstate commerce.
Under the Lanham Act, "use in commerce" means:
"the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. [A] mark shall be deemed to be in use in commerce -
* (1) on goods when -
* (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and \
* (B) the goods are sold or transported in commerce, and
(2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services."
15 U.S.C. §1127
Each of the following symbols should appear following your mark at least once in any document in which it appears:
- Trademark prior to registration: TM
- Service mark prior to registration: SM
- Trademark or service mark post registration: ®