Who Are You? Difficulties in Obtaining Trademark Protection for Domain Names

Three appellate decisions illustrate the difficulty of acquiring trademark protection for domain names that include a top-level domain (“TLD”), such as “.com.” Courts have characterized these marks as generic or merely descriptive, which carries implications for the party seeking registration: generic marks cannot be protected, while descriptive marks can, assuming they possess a secondary meaning that makes the mark distinctive. Generic and descriptive domain names often indicate the services a company provides, with the addition of the “.com” TLD to indicate online services. One key test of genericness is whether the public identifies the mark with a service generally or with a company specifically. This Article examines the rationales supporting the generic-descriptive distinction for domain names with TLDs. When a website does more than merely sell a product online that could be obtained in a brick and mortar store—such as providing additional consumer tools and flexibility unique to the online medium—the domain name has an increased chance of being viewed as descriptive and potentially protectable.