Two Names Are Better Than One: Trademarks Don't Make Good Internet Domains, and Vice Versa. Why Not Pick a New Name for the Web? (Special Advertising Section)

Article excerpt

Arbitrary and fanciful terms tend to be strong trademarks, but they don't tend to be successful as Internet domain names. Trademarks as site names aren't likely to generate a large number of hits--not unless one can engage in a massive advertising campaign and use many descriptive words (called meta tags) to link the site to search engines.

So, one may want to consider a separate trademark and domain name, as long as matching the Web address to the trademark brand is not an imperative.

This could weaken the association between the mark and the domain name. But one may want to consider adopting a descriptive domain name and applying for registration of it on the Supplemental Register. The mark must have been used in connection with commercial sales at the time of filing.

The U.S. Patent and Trademark office has two registers--the Principal Register and the Supplemental Register. In most cases, marks are registered on the Principal Register. Such marks are entitled to all the rights provided by the Trademark Act of 1946. Terms that are descriptive words cannot be on the Principal Register but they can be on the Supplemental Register. (For example, a generic domain name and trademark such as hotjobs.com or drugstore.com may result in many hits to the Web site but would not be entitled to federal trademark registration on the Principal Register, unless the company could show a secondary meaning for those words.)

Marks on the Supplemental Register are not afforded all the benefits of marks that are on the Principal Register. The primary differences between the two are as follows:

* A Principal Registration is prima facie evidence of an exclusive right to use of the mark, but a Supplemental Registration has no such effect.

* A Principal Registration is notice of claim of ownership, but a Supplemental Registration has no such effect.

* While a Principal Registration may become incontestable after five years, a Supplemental Registration can never achieve that status.

* Being listed on the Supplemental Register is not a basis for the Department of the Treasury to stop the importation of infringing products into the United States.

* In litigation where a plaintiff has a Supplemental Registration, the mark will not, prima facie, receive protection as a valid trademark. Its very presence on the Supplemental Register indicates a preliminary determination that the mark is not distinctive. But such a mark may, through use, become distinctive and thus receive protection.

So what's the point of obtaining a Supplemental Registration?

* Suit for infringement of the registered mark can be brought in federal court, along with a related claim of unfair competition. Even though the Supplemental Registration creates no substantive rights, questions of validity, ownership and infringement of these registrations are governed by federal law. …