Primer on Trademarks Vs. Urls and State Corporate Registrations

I often encounter clients that come to me to complain about infringement of their “trademark” based on the assumption that particular actions they have taken constitute a registration of a “trademark”. I have outlined some basic distinctions which will help you determine the status of your “trademark”.

• A domain name (a/k/a URL) is a notation used to find a particular website on the internet. It does not constitute a right of ownership to exclusive use of the words or symbols used in the URL. If there is a pre-existing “trademark” registered using those words or symbols, the owner thereof can sue to have the offending URL revoked or ownership transferred.

• A company name registered with a state as the name of a corporation or an LLC is just that. Using the registered company name in state records does not confer any ownership rights to use of the “trademark” unless it is registered under the state’s “trademark” registration statutes. If there is a pre-existing “trademark” in use or registered using those words or symbols, that owner can sue to prohibit use of the state registered company name in situations that might indicate the source or origin of particular products or services associated with the “trademark”.

• A trade name is the name you use to advertise your business to the public, and is distinguished from a “trademark” in that a trade name may not qualify to be registered as a “trademark”. Under most circumstances, you cannot obtain a trademark for generic terms or common names, etc.

• A “trademark” is a combination of words and/or symbols used to indicate to the public the unique source or origin for the service or product associated with the “trademark”. At the state level, a “trademark” can be established by local use; at the federal level, use in interstate commerce and registration with the United States Patent and Trademark Office (USPTO) is required. Although prior use may establish rights to use within an established marketplace, but use outside of the marketplace might constitute an infringement of a later federally registered “trademark”.

• However, the simple use of a trade name (as distinguished from a “trademark”) in commerce is sufficient to establish a rebuttable presumption that you are also the owner of the “trademark” for the market in which you operate, if you were the first to use it there (and with the caveat that no federal trademark has previously been registered).

• But to establish ownership nationally, you need to register your claim to ownership on the federal level with the USPTO. A federally registered “trademark” grants you exclusive rights to use of the “trademark” to specify the source or origin of the goods or services on which the “trademark” was used and registration filed and granted.

The distinctions drawn above are just preliminary in scope. Trademark issues can be quite complex. Consultation with an experienced attorney is always recommended when addressing “trademark” issues.