What is a domain name?
Domain names are the human-friendly forms of Internet addresses, and are commonly used to find web sites. A domain name also forms the basis of other methods or applications on the Internet, such as file transfer (ftp) or email addresses – for example the email address rkain@ComplexIP.com is also based on the domain name ComplexIP.com.
What is the domain name system (DNS)?
The domain name system is essentially a global addressing system. It is the way that domain names are located and translated into Internet Protocol (IP) addresses, and vice versa. A domain name such as ComplexIP.com is a unique alias for an IP address (a number), which is an actual physical point on the Internet.
What is a gTLD?
A gTLD is a generic top level domain. It is the top-level domain of an Internet address, for example: .com, .net and .org. In addition, seven new gTLDs were also selected by ICANN (the Internet Corporation for Assigned Names and Numbers) on November 16, 2000. These are: .aero (for the entire aviation community); .biz (for business purposes); .coop (for cooperatives); .info (unrestricted); .museum (for museums); .name (for personal names); .pro (for professionals).
What is the nature of domain name disputes?
Domain name disputes arise largely from the practice of cybersquatting, which involves the registration by third parties of domain names which contain some or all of another’s trademark. Like any litigation or arbitration, there are two perspectives regarding domain disputes. On the one hand, there are trademark owners trying to protect their marks. On the other side, are domain owners who are seeking to own/use domains for reasons that include commercial exploitation, commentary, and criticism. From the trademark owners view, cybersquatters exploit the first-come, first-served nature of the domain name registration system to register names of trademarks, famous people or businesses with which they have no connection. Since registration of domain names is relatively simple, domain owners can register numerous examples of such names as domain names, and in fact, many domain owners are in the business of purchasing domains. As the holders of these registrations, domain owners often then put the domain names up for auction, or offer them for sale to the public at large or directly to the company or person involved. Sometime these sales offers are at prices far beyond the cost of registration and trademark owners find this to be an unfair exploitation of property they claim ownership in. Alternatively, domain owners can keep the registration and use the name of the person or business associated with that domain name to attract business for their own sites. Domain names used for criticism, commentary and fair use are usually permitted. Domain name disputes are usually subject to the Uniform Domain Name Dispute Resolution Policy (UDRP), but can also be handled through federal court litigation under the Anticybersquatting Consumer Protection Act (ACPA). In addition, most of these new registry operators have developed, or are in the process of developing, specific dispute resolution policies designed to resolve disputes occurring during a start-up, or “sunrise” phase.
What are the results of the procedures, and are they binding?
A domain name is either transferred or the complaint is denied and the respondent keeps the domain name. It is also possible to seek cancellation of the domain name. There are no monetary damages applied in UDRP domain name disputes, and no injunctive relief is available. The accredited domain name registrars – which have agreed to abide by the UDRP – implement a decision after a period of ten days, unless the decision is appealed in court in that time. The panel decisions are mandatory in the sense that accredited registrars are bound to take the necessary steps to enforce a UDRP decision, such as transferring the name concerned. However, under the UDRP, either party retains the option to take the dispute to a court of competent jurisdiction for independent resolution.
What kind of trademarks can be registered?
Trademarks may be a single or a combination of words, letters, numerals, drawings, symbols, three- dimensional signs such as the shape and packaging of goods, audible signs such as music or vocal sounds, fragrances, or colors if those items are used as distinguishing features for goods or services. In addition to trademarks associated with a commercial source of goods or services, several other categories of marks exist. Collective marks are owned by an association whose members use them to identify themselves with a level of quality and other requirements set by the association. Examples of such associations would be those representing accountants, engineers, or architects.
Can I reserve a trademark?
In the U.S., one acquires rights to a trademark by using the mark. However, a person who has a bona fide intention to use a trademark may apply to register the mark on the principal register of the U.S. Patent and Trademark Office (PTO). After use of the mark, and compliance with other PTO rules, the mark is registerable.
Do I need to register my trademark?
Although using a trademark first in a given territory establishes some rights, there are important advantages to registration of the trademark in the principal register of the PTO. State registration of a trademark is also possible. A certificate of registration in the PTO is prima facie evidence of nationwide use of the trademark, ownership and distinctiveness of the mark, among others. An applicant can also file for a trademark prior to actually using the mark. This is an “intent to use” application but, for registration of the mark, an applicant must show use of the trademark. Such a showing requires a specimen or facsimile of the mark as used in commerce with the goods or service, and a verified statement that the mark is in use in commerce and specifying the date of first use.
Do I need to complete a trademark search?
We typically recommend that our clients conduct a search prior to using the mark or seeking registration. If no search is performed and you start using a mark, that use may infringe the trademark rights of another person resulting in potential monetary liability.
Are there federal regulations governing the use of the designations “TM” or “SM” or “®” with trademarks?
For “TM” or “SM,” no, but the use of “®” is limited by federal law. The “TM” and “SM” designations usually indicate that a party claims rights in the mark and are often used before a federal registration is issued. The federal registration symbol “®” may be used once the mark is actually registered in the U.S. Patent and Trademark Office. Even though an application is pending, the registration symbol may not be used before the mark has been registered. The federal registration symbol should only be used on goods or services that are listed in the federal trademark registration.
How long does a trademark registration last?
For a trademark registration to remain valid, an Affidavit of Use (“Section 8 Affidavit”) must be filed: (1) between the fifth and sixth year following registration, and (2) within the year before the end of every ten-year period after the date of registration. The registrant must also file a §9 renewal application within one year before the expiration date of a registration, or within a grace period with payment of an additional fee. Assuming that an affidavit of use is timely filed, registrations granted PRIOR to November 16, 1989 have a 20-year term, and registrations granted on or after November 16, 1989 have a 10-year term. This is also true for the renewal periods; renewals granted PRIOR to November 16, 1989 have a 20-year term, and renewals granted on or after November 16, 1989 have a 10-year term.
Is a federal registration valid outside the United States?
No. However, if you are a qualified owner of a trademark application pending before the PTO, or of a registration issued by the PTO, you may seek registration in any of the countries that have joined the Madrid Protocol by filing a single application. Also, certain countries recognize a United States registration as a basis for filing an application to register a mark in those countries under international treaties (the Paris Convention). You can also file individual applications in many foreign countries. As a result of goods and services sold over the Internet with the trademark, careful consideration should be given to selecting and protecting the appropriate marks in various countries.