In the last post, it was noted that a person’s name does not necessarily (nor usually) serve as a trademark.  When dealing in e-commerce and evaluating legal rights in branding, it is similarly important to know that a domain name is not equivalent to, nor does it carry the same rights as, a trademark.

A domain name, of course, is really just an informational shorthand for an address.  Often times, it has zero trademark value.

Setting aside all cybersquatting and related domain name law issues on the presumption that a domain holder had a legitimate right to obtain the domain name www.woodfurniture.com, let’s have a look at that example.  The phrase “wood furniture” is not trademarkable because it is a generic term describing a certain kind of goods, and not a distinctive designation of the source of those goods.

A parallel example is that you can’t preclude someone else from using the generic words “orange juice” to sell fruit juice made from oranges, but Tropicana has the trademark rights to stop another company from using the word “Tropicana” on that company’s orange juice because Tropicana is a registered name that connotes the brand and source of its juice.

If you are choosing a domain name, and are interested in having trademark rights that run parallel to the rights in it, that domain name cannot be generic or “merely descriptive” in relation to its subject matter.

Also, you will have to register the trademark with the Patent and Trademark Office (entirely separate from the domain name registration process) to obtain the rights of a trademark holder in a word or phrase you have in your domain name.

So, while a generic name can often be an outstanding one to have as a Internet domain, it generally has no trademark value; and the value of a trademark is determined by the public’s awareness, built over time, of the unique association of that mark with the seller of a certain kind of goods and services.

A domain name can get a lot of instant hits when it is put in play from consumers who don’t know you, but a trademark’s value is created more gradually via the public building a connection between the unique name of your product and the specific kind of goods or services you are selling.

It can take a lot of time and effort to create, build and protect the name you are using (on and off the Web).  There are a lot of legal sub-issues that can’t be covered in a single post of reasonable length, so let Richardson Sixth know if there are some particular circumstances you need to discuss.

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