Trademarks and domain names can be confusing. None of this article should be taken as formal legal advice, but it should help you understand the basics.
The difference between domain names and trademarks
Domains and trademarks are very different things:
- A domain name gives you the exclusive right to that domain, such as “brandpa.com” anywhere in the world.
- A trademark is form of legal protection for your brand, in a specific location. Trademarks take many forms, but most often a name or logo.
When you buy a domain name, you immediately obtain the right to use that domain around the world for your own website and email. No-one else can use that domain so long as you possess it, and the process is instantaneous.
A trademark is very different. You must register a trademarks for a specific location – usually a country – and for a specific purpose. For example, you might register the name “Eryson” for food delivery service in the United Kingdom.
By themselves, trademarks don’t do anything, but owning a trademark can be a key legal protection against other people impersonating your brand. If a restaurant called “Eryson” opened in a location covered by your trademark, you would be able to take legal action against them, which could include stopping them from using that name, and potentially financial compensation.
This does not mean, however, that you would own the universal rights to the word “Eryson”. For example, someone could open an engine manufacturer with that name, and even though the names were identical, their uses would be so different that they would likely be allowed to co-exist. There are plenty of examples of this, like Apple for computers, and Apple the music label.
The idea is that if someone uses a name in one country it prevents other people using that name in the same country for something similar. It doesn’t prevent using that name in a different country, or for something completely unrelated. In that sense, local trademarks can be quite accommodating. But if you’re overlapping with a large, global company, it’s best to stay clear.
The full details of trademarks are far more complex than we can cover here. Different countries have different requirements to register them, and you will usually need legal help to do so. Trademarks can take years to register, and be contested during the registration process. Trademarks also need to be renewed, often with evidence that they are being continually used when you do so. And of course, enforcing your trademark requires legal action and advice.
Does buying a domain name give me a trademark?
Absolutely not. This would not be possible, as trademarks are specific to the countries and purpose they are registered for.
Buying a domain name simply gives you exclusive rights to use that domain name on the Internet. It does not grant any other legal rights.
Does having a trademark give me a domain name?
Rarely. If you own an established trademark, and someone owns a domain name containing your trademark and is not using it, then you can have a case to argue the domain should be transferred to you. The steps involved are relatively slow, complex and not guaranteed to work.
More realistically, if you are using someone else’s trademark in a way that could be seen as confusing their prospects or customers, you can face legal action from that company.
What if someone is using a similar domain to mine?
Say you’re looking to use ThisDomainName.com, but someone already has ThisDomainName.net. Is that a problem for you?
The main concerns would be:
- Is their website extremely popular? Try looking on SimilarWeb for free information on how many visitors it receives. A popular website may make it difficult for you to rank for your own name, and is probably best avoided.
- Is their website doing something illegal / offensive? This could cause you problems by association.
- Are they doing something that’d be confusingly similar to you? This is especially true if they’re in the same country. This could mean you’re walking into an established trademark, and it also makes your own brand harder to establish.
Generally if you own the dot-com for a domain, you own the ‘best’ version of that domain. So assuming you have a legitimate cause to establish a unique product or service at that address, you can make that domain work well, regardless of others owning other domain extensions.
What steps should I take when obtaining a domain for my business?
Depending on what the domain costs, you’ll want to complete these steps before or after you buy the domain. If a domain is cheap, you may prefer to secure it first and check trademarks later. For a big investment, you may want to check your trademark options first:
- Google for the name. Is it widely used, especially for something similar? If so, this is probably a name to avoid.
- Perform an online trademark search for the name you are interested in, in the countries you wish to trade in. For example: search US trademarks, or search UK trademarks. This will help to identify any immediate conflicts. If there is a similar or identical name used for an overlapping industry, this is probably a name to avoid.
- Ask trademark specialists to perform a search for you. Costs vary, but expect to pay hundreds of dollars per country. This search will be similar to your own, but far more exhaustive, and will take a bit longer (couple of days to a couple of weeks).
- Register trademarks in the countries you wish to trade in. This is typically a long process, requiring legal professionals, with some countries taking far longer than others. It is not unusual to wait for over a year for a trademark application, and to pay around $1,000 USD per country. Because of this, it is common to buy the domain name before or during this step.
The result will be you own both your domain and at least one trademark protecting the name behind it.
Do I need a trademark to use a domain?
No, but they offer several key benefits:
- Protection against people impersonating your business
- Safety from people taking legal action against you, for infringing their trademarks
- They are an asset that can be sold, and will be crucial if you ever sell your business
We recommend that if you’re using a domain for commercial purposes, you seek professional advice on how to secure and protect your trademarks.
Can Brandpa help me register my trademarks?
No. This is a specialist skill, requiring legal professionals, and it varies from country to country. We recommend you Google for “IP advice” or similar and seek somebody in your country.