When is a Domain Name a Trademark … and When is it Not?

Domain names are valuable assets to any business, but can they serve the function of trademarks or service marks?  Sometimes yes, sometimes no, according to a recent decision of the Trademark Trial and Appeal Board (TTAB).  In the decision  In Re Vicki Roberts , the TTAB upheld the decision of the examining attorney to deny registration of the service mark application for irestmycase.  The applicant, Los Angeles attorney Vicki Roberts, represents several Hollywood stars and has been a guest on nationally syndicated and cable television shows. 

Ms. Roberts is also the registrant of at least two domain names:  www.restmycase.com andwww.irestmycase.com.  When Ms. Roberts applied for federal registration of the service mark irestmycase, she used a press release as a specimen of the mark.  (A specimen is an example of how a mark is used in commerce.) 

The press release contained the following information: VICKI ROBERTS, ESQ. P.O. Box 642326 Los Angeles, CA 90064——————–Phone:  (310) 475-8549 Fax:  (310) 478-6365www.restmycase.com The examining attorney initially refused registration because (among other reasons) the specimen didn’t agree with the mark for which registration was being sought. 

In response to this refusal, Ms. Roberts (through her trademark attorney) submitted two substitute specimens:  a printout from an Internet message board showing her profile page with the user name “restmycase,” and a copy of her letterhead, the latter of which reads: VICKI ROBERTS, ESQ. P.O. Box 642326 Los Angeles, CA 90064——————–Phone:  (310) 475-8549 Fax:  (310) 478-6365 www.irestmycase.com After a final refusal was issued, additional specimens were submitted, leading to a “second” final refusal.  Undaunted, the attorney of record filed an appeal with the TTAB.

Aside from the fact that “restmycase” and “irestmycase” are two separate and distinct terms, the TTAB upheld the examiner’s decision that Ms. Roberts failed to show that irestmycase was being used as a service mark.  Citing a decision from nearly a decade prior ( In re Eilberg , 49 USPQ2d 1955 (TTAB 1999)), the Board concluded that the use of irestmycase, embedded in the domain name www.irestmycase.com in the letterhead, merely serves as a means by which Ms. Roberts can be reached, not unlike her P.O. box or her telephone and fax numbers. Does this mean a domain name can never serve as a service mark?  Not at all. 

Also citing the  In re Eilberg  decision, the Board noted that if the name of the law firm was irestmycase, or if the term irestmycase was presented prominently on letterhead or business cards, it could be registered as a service mark.  But the specimens submitted did neither. The lesson to be learned from this decision is that no matter how well known a domain name is, if it doesn’t function as a mark, i.e., if it doesn’t identify the applicant’s services and indicate their source,  it can’t receive federal registration as such. 

Carl Mueller, CLAS is a Certified Paralegal with Advanced Paralegal Certification in Intellectual Property with the Law Office of Chris Stewart, P.C.  He can be reached atcarl@chrisstewartlaw.com

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