When considering your organization’s intellectual property protection plan, special attention should be given to the issue of domain names and social media. Domain names, hashtags, and social media handles can be used to immediately separate you from the rest of the businesses and people online.
It’s important to remember, the same rules apply to domain names, hashtags, and social media handles as to the word portion of the domain name itself, for example. That’s because a domain extension commonly signifies the type of entity using the domain name and adding the hash symbol (#) to an otherwise unregistrable mark generally will not render it registrable. So, if you’re filing for a generic term for a website like CatAdoption.com for the adoption of cats, adding the dot-com to cat adoption is not going to create a distinct trademark for you.
USPTO rules and guidance on this issue can be found in the Trademark Manual of Examining Procedure. It’s not an absolute rule, but the addition of “.com” to an otherwise unregistrable mark typically cannot render it registrable. In order to get around that, there needs to be some level of distinctiveness created by the adding of the dot-com.
That said, if you want to protect your domain name, you should file for protection, even if it will be considered descriptive. You can get that domain name onto the Supplemental Register, and after five years the US Patent and Trademark Office (USPTO) likely will find that the mark has acquired a secondary meaning — it will be considered distinct.
Something as important as your mark deserves the attention of an experienced and qualified IP attorney. Contact me to learn more