Watson IP Group

Watson IP Group

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Difference Between Domain Names or State Corporate Names and Trademarks

Approval of a domain name, and approval of a corporate name by the Secretary of State of a particular state, does not, in and of itself confer trademark rights, nor does it mean that you can use that name in association with your goods or services.

Neither domain name registration nor corporate name registration processes take into account the goods and services associated with these names. Therefore, the fact that you have the name secured does not mean that you are able to use it for a particular good or service. Also, the mere registration does not start the accrual of any common law rights.

However, if you start using the domain name and/or the corporate name in conjunction with the sales of goods and services, this is the start of using the mark in association with the goods and services, and therefore the start of accruing at least common law rights.

Additionally, none of these uses actually may be a use in commerce, especially if the business name is not being used as an identifier of source. For example, it may be that the McDonalds franchise near your office is using the McDonalds trademarks, but the franchise owner’s business is XYZRestaurant, LLC. In that case, the corporate name is not even being used as a trademark.

At best, with a domain name or a corporation name, one may be able to establish common law rights. A common law trademark is another name for an unregistered trademark. A person has common law trademark rights when they start to use a trademark in connection with the sale of any goods or services. While these are rights which essentially happen automatically with the starting of use in connection with sales, common law rights are limited to the territory or geographic scope under which a trademark is actually being used. Therefore, relying solely on common law rights can be problematic in the long run, and certainly, it is not a best practice.

Again, even if one has started to construe common law trademark rights, these are in no manner equivalent to a Federal Trademark Registration. A Federal Trademark registration provides benefits that are not available under common law. These include (1) a legal presumption of the exclusive right to use your mark nationwide in connection with the goods and services listed in the registration; (2)a legal presumption that you are the owner of the mark; (3) a Federal Registration paces the public on notice that you are the owner of the mark; (4) you are in the USPTO database, and the USPTO will not all other marks to be registered that they deem confusingly similar to your mark; (5) you have the ability to record the trademark with the US Customs and Border Protection Agency; (6) by virtue of the Federal Trademark Registration, you have the right to bring a legal action concerning the registered mark (such as an accusation of infringement against another party) in Federal District Court; the Federal Trademark Registration can form the basis for applying for a trademark registration in many foreign countries around the world; and (8) the Federal Trademark Registration allows you to use the “circle R” symbol ® when displaying your mark. This can only legally be done with a Federally Registered Trademark. The symbol indicates and places the public on notice that you have nationwide rights to the mark.

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