Should I file a trademark application for a domain name if someone else owns it and isn’t using it?

Thank you for your question. My response will analyze two issues. First, I will cover the four requirements that your domain name would have to satisfy to obtain trademark protection. Then, I will discuss how you could appropriate your competitor’s trademark name if that name was already registered with the U.S. Patent and Trademark Office. I am assuming that you are only seeking federal trademark protection – if you also want to register your mark in a state, message me for more details.

Your domain name would have to meet the following criteria for trademark protection:

· Be used in the ordinary course of trade between states or between the United States and foreign nations. Products associated with your domain name should display the registered mark and documents associated with the domain name should do so as well.

· The mark must be distinctive and non-generic (this means that the trademark cannot be the dictionary term for your product or service

o Marks that are fanciful, arbitrary, or suggestive automatically meet the distinctiveness requirement. Fanciful marks are coined for use as trademarks and have no previous common dictionary meaning. Arbitrary marks may have common meanings but do not suggest or describe the goods or services for which they are used. Suggestive marks suggest a good’s or service’s quality or characteristic – thought, imagination, and perception are required to connect the good or service with the trademark. Descriptive marks describe a good’s or service’s ingredients, quality, function, purpose, and use – these marks are entitled to protection only after they are solidly associated in consumers’ minds with your product.

· The mark cannot be too similar to an existing trademark

· Domain name trademarks should not be generic and should also function as a service signifier, not an address that helps consumers find your firm.

Assuming your competitor’s trademark is registered, you could still appropriate it under certain circumstances. If the trademark was not registered and your competitor is still claiming an ownership right in the mark, he could forfeit his rights in the mark if he misused the trademark or did not take action against you and others who were infringing on the mark. If the trademark was registered with the patent office, he could forfeit his rights in the mark if he did not renew his application in a timely manner or use the mark consistently in commerce. I hope this helps.

Need assistance filing your trademark? LawTrades has amazing business lawyers across the country who can help get your business off the ground. We offer free initial consultations, transparent flat-fee pricing, and start-to-finish project management. Feel free to message me with any questions!