Can you own a domain name if you don’t own the trademark on it?

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Can you own a domain name if you don’t own the trademark on it?

I registered a domain name 10 months ago and used that same name on my products and have sold a few products with that name. I never registered a trademark, however. I got a call today from someone saying that they just got a trademark for the name and want the domain name. They said they will be able to get the domain name from me since they have the trademark. Is this true? What should I do?

Asked on January 22, 2014 under Business Law, New Jersey


SJZ, Member, New York Bar / FreeAdvice Contributing Attorney

Answered 9 years ago | Contributor

1) Owning a domain name is very different from owing a trademark: owning a domain name means registering that name for use on the internet; whereas a trademark means that a certain mark, name, work, symbol, etc. has become associated with your products or services.

You can have a trademark without a domain name--anyone who did business before the internet did, after all, as does anyone now whose trademark does not match their domain name.

You can also own a domain name without owing a trademark, such as if you have registered the name but not yet used it in commerce, or use it in commerce, but the domain name does not meet the criteria (such as originality, non-descriptiveness, etc.) to qualify as a trademark.

2) If someone has a trademark, they can generally stop it from being used by another in commerce, such as in a domain name, though there are exceptions.

3) If you had the domain name and (1) it would meet the criteria to be qualify as a trademark, (2) you used it in commerce, and (3) you used it before the other person did, that may be enough to challenge or invalidate their mark.

The best thing to do is to discuss the situation in detail, with samples of the use of the domain name, all relevant dates, any samples of the other person's trademark, etc. to evaluate whether the other person can stop you from using your domain name; or if you can challenge their trademark; or possibly neither of your uses actually impacts the other's use. (For example: trademarks have a certain degree of specificity to the products or services they cover; it may not affect you if your business and the other person's have nothing to do with each other.) You may also be able to claim your domain name as a trademark, if it does meet the correct criteria.

IMPORTANT NOTICE: The Answer(s) provided above are for general information only. The attorney providing the answer was not serving as the attorney for the person submitting the question or in any attorney-client relationship with such person. Laws may vary from state to state, and sometimes change. Tiny variations in the facts, or a fact not set forth in a question, often can change a legal outcome or an attorney's conclusion. Although has verified the attorney was admitted to practice law in at least one jurisdiction, he or she may not be authorized to practice law in the jurisdiction referred to in the question, nor is he or she necessarily experienced in the area of the law involved. Unlike the information in the Answer(s) above, upon which you should NOT rely, for personal advice you can rely upon we suggest you retain an attorney to represent you.

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