Domain Names and Trademarks

"I have secured several domain names for a publishing company website under development. Since purchasing these domain names I periodically receive unsolicited e-mails from companies indicating that I need to "register" the names. If not, the correspondence indicates, I will lose all rights to the domain name. They indicate, for a price, I need to register or license the name. What protection, if any, is needed once I secure a domain name so that I can use it and any associated logos/trademarks?"-- Steve Pattison, Surtees Publishing

When you "register" a domain name with an official registrar you may use that domain name for your website, but this doesn't mean you have any rights to a trademark. Trademarks are handled entirely separately from domain names by state and national governments. In the US, federal trademark registration is handled by the US Patent and Trademark Office (USPTO; http://www.uspto.gov/main/trademarks.htm). If your domain name is a similar to a registered trademark, it is possible you could be forced to relinquish the domain name. For example, I wouldn't use domain names that include the word "disney" or other recognized trademarks.

If you plan to invest thousands of dollars in an Internet start-up, make sure that you research the trademark status of your preferred company name and domain name by searching the USPTO database or the national trademark database in your country. Though filing fees for do-it-yourselfers start at US $375, trademark law is quite complex and you may want to hire a trademark attorney to register your domain. To get a good handle on trademark protections, read Trademark: Legal Care for Your Business & Product Name, by Kate McGrath and Stephen Elias (6th Edition; Nolo Press, 2003), ISBN 0873379454.