You are the owner of a trademark if you use it before anyone else. First Come – First Serve. Many companies register domain names which contain their trademarks. Examples include The Coca Cola Company which owns www.coke.com and www.cocacola.com.
If a person uses a domain name that contains the trademark, www.cocacoladrinks.com, people might think the site is affiliated with The Coca Cola Company. If a domain name is confusing to consumers, the purchase of that domain name is probably guilty of a trademark infringement.
Domain Name As Trademark
You are the genuine owner of any trademark if you use it before anyone else. This also applies if you choose to use a domain name as a trademark. A trademark makes it simple to impose your rights as a trademark owner. This works largely in your favour especially in law suits when you might need to convince the judge that another party is guilty of wrongly using your brand name idea. Every lawyer would gladly take your case and put some money in your pocket if you have this type of evidence.
You can file a trademark application at the United States Patent and Trademark Office (USPTO) website for less than $400 using the USPTO TEAS electronic filing system. It might cost a little bit more, if you are offering a host of other services on your site.
It is not every domain that you can register as a trademark. USPTO is very particular about the domain names that you can register. You cannot register a generic domain name like sports.com or clothes.com. Moreover, it is very hard to register a domain name that you use only as an address and not as an indicator of service. For example, a law firm of Bradley and Boulders would have tough time registering bradleyandboulders.com. There would need to be ample proof that the domain is used for other purposes rather than advertising the services of a law firm.
How USPTO Works
To conclude the registration process, the domain name has to be in use or you need to show intent to use. The application is treated from the date you used the mark. If you file an intent-to-use application, you pay an additional fee of $150. The process may take up to a year. However, USPTO will mark your domain name as a pending trademark on their website.
Alternatively, if your website is already live, the process may take only 3-6 months. Any hassles should be easy to fix with as little as a phone call. At some point during your application you will receive a Notice of Publication. The USPTO will then publish your mark for people to raise any grievances about it
If there is no opposition, you will receive a Certificate of Registration or if you show intent to use the trademark, a Notice of Allowance. Every 5-10 years, you would need to still inform the USPTO that you are still using the trademark. A domain name registration is renewed every 5 years for a further 10 year period. It is important that you file a Section 8 declaration which is an affidavit to always state your intentions.