Domain Name Abuse & Bad Faith

In theTTAB case, Edom Laboratories, Inc. v. Lichter, (TTAB 2012), a domain name owner had domain names that contained the trademarks of a competitor and configured pages to redirect to his pages. The TTAB found “Under the thirteenth du Pont factor, evidence of applicant's bad faith adoption of his mark is relevant to our likelihood of confusion analysis.” L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883, 1891 (TTAB 2008) (bad faith is strong evidence that confusion is likely, as such an inference is drawn from the imitator's expectation of confusion). See also, J & J Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991); and L'Oreal S.A. and L'Oreal USA, Inc. v. Robert Victor Marcon, ___ USPQ2d ___, Opp. No. 91184456 (TTAB March 20, 2012) slip op. at 25 (applicant's "demonstrated pattern of filing applications to register various well-known marks convinces us that applicant's adoption of [opposer's] mark was in bad faith").

First Steps in Protecting Domain Names

The three important steps to protect a domain name are the same as a trademark: (1) Creation, (2) Screening and Clearance, and (3) Protection. A good domain name distinguishes you from your competitors and helps to bring in business. A bad choice for a domain name may bring lawsuits or loss of the use of the domain name. Not Just Patents® recommends that our Five-Step Verification Process can help maximize the commercial strength and minimize the weaknesses of a trademark or domain name.

Creation of a Domain Name

When creating domain names, it is best to pick non-infringing names. Domain names are inexpensive, lawsuits are not. When creating domain names that are to become trademarked brand names, tag lines or slogans, plan ahead for success and create a name that can be trademarked and create distinctive and non-infringing names.

A domain name may be a trade name, a descriptive name, or it may be a brand name that you wish to register as a trademark or service mark. Be aware that a trade name or a descriptive name cannot be registered as a trademark unless other requirements are met. Many businesses use descriptive names in order to gain quick recognition for products or services (which may be a good strategy for a product with a short life cycle) but this descriptiveness may jeopardize the ability to trademark the name.

Many businesses register multiple domain names including those that can be protected as a brand name (trademark). This pre-emptive anti-cybersquatting tactic can save a lot of money in the long run because domain names are relatively cheap compared to lawsuits. Examples of multiple domain names for the same business are multiple extension names for the same business name, common misspellings of the business name (anti-”typosquatting”), descriptions of different functions of the business as names, advertising slogan names, and other names that are linked to the business.

A trademark registered on the Principal Register of the United States Patent and Trademark Office (USPTO) has many advantages including being protectable both through civil court (infringement) and through federal criminal statutes (counterfeit or pirated use of the trademark). See Comparison of Principal Register and Supplemental Register for USPTO Trademark Registration advantages and see Anti-Counterfeit Enforcement for ways to protect registered trademarks against counterfeits and pirating. See Examination Guide 2-99 (pdf) for a complete description of the USPTO policy on registering Domain Names as Trademarks.

Distinctiveness or How to be Inherently Distinctive

What is a distinctive name for the purposes of obtaining a trademark from the United States Patent and Trademark Office (USPTO) is found in the Trademark Manual of Examining Procedure (TMEP) in Section 1209.01.

Distinctiveness is the opposite of descriptiveness for trademark purposes and marks vary along a continuum from being highly distinctive and inherently distinctive to being generic with highly distinctiveness marks being registrable on the Principal Register  and generic marks (common or class names for goods or services) being not registrable as trademarks under either the Principal or Supplement Register.

The terms are further defined in TMEP 1209.01: “Fanciful marks comprise terms that have been invented for the sole purpose of functioning as a trademark or service mark. Such marks comprise words that are either unknown in the language (e.g., PEPSI, KODAK, EXXON) or are completely out of common usage (e.g., FLIVVER).”

“Arbitrary marks comprise words that are in common linguistic use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality or characteristic of the goods or services (e.g., APPLE for computers; OLD CROW for whiskey).”

“A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services.”

“Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services.”

Screening and Clearance of a Domain Name

A domain name registrant or user should screen and clear names before registering or using them. A domain name registrant (trafficker or user) is liable in a civil action if they intentionally register a domain name that infringes on the trademark rights of a prior owner of a trademark. It is important to screen out choices of domain names that will be a civil liability or a criminal liability risk to a business by getting a trademark search that includes domain names (along with common law trademark names and federally registered trademarks) and getting a trademark clearance opinion on whether or not the domain name is infringing.

Infringement of a domain name may come from other domain names or from trademarks that have been used in commerce that are either ‘distinctive’ or ‘famous.’ Infringement may be for marks that are ‘identical’ or ‘confusingly similar’ if the mark is a distinctive mark or that is ‘identical’ to or ‘confusingly similar’ to or ‘dilutive’ of a mark if the mark is famous (a well-known mark).

The terms ‘identical’, ‘confusingly similar’ and ‘dilutive’ are legal terms of art that are specific to trademark law and are defined by case law. A trademark attorney can give specific advice on avoiding domain names that are infringing. Trademark applicants applying to the USPTO must meet all the procedural and substantive requirements of the Lanham Trademark Act and Trademark Rules of Practice, whether or not they are represented by an attorney.

In order to comply with the Anticybersquatting Consumer Protection Act (ACPA), which is also known as Title III-Trademark Cyberpiracy Prevention, a domain name must, in general, be a noninfringing use of a name. Some of the nonexclusive, nonexhaustive factors that a court may consider when deciding if the conduct of the domain name registrant, trafficker or user is actionable (done with bad faith intent) are:

A nonexclusive, nonexhaustive list of factors that a court has the discretion to consider that act as a safe harbor provision to show that a use was not in bad faith include:

“Bad faith intent [ ] shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.” (Section 3002(a)ii of Act.)

Protection of a Domain Name--

Remedies Available to a Trademark Owner/Domain Name Owner Who Has Been Infringed

Domain name registrants that have inherently distinctive names or famous names should monitor use of their names by others on the internet and in other commercial use for infringement or counterfeiting. Remedies and injunctions are available for those who have trademarks on the Principal Register of the USPTO against those who violate U.S. Trademark Law. A Common Law remedy of forced transfer of domain name is available for those who have inherently distinctive domain names or trademarks  that are being infringed through dispute resolution such as that the WIPO (World Intellectual Property Organization) provides.

Trademark registrants of a mark registered in the USPTO whose rights have been civilly infringed may be entitled to injunctions (stop the use of the infringing name, goods or services), the plaintiff may also be entitled to recover defendant’s profits, any damages sustained by the plaintiff (up to 3 times damages under some circumstances), and the costs of the action. The court in exceptional cases may award reasonable attorney fees to the prevailing party.

Violation of the Anticybersquatting Consumer Protection Act may lead to a court taking action against the domain name registrant with the following consequences: forfeiture, cancellation, or transfer of a domain name to the owner of the mark and other remedies including injunctive relief, recovery of defendant's profits, actual damages, and costs, and statutory damages (in cybersquatting cases), in an amount of not less than $1,000 and not more than $100,000 per domain name, as the court considers just.

Plan For a Successful, Strong Domain Name

To verify a potential domain name may become a strong trademark, is available to use, and is ready to register on the Principal Register with the USPTO, we start with these five steps:

1) Verify Inherent Strength (this avoids merely descriptive, geographically descriptive, likelihood of confusion and other office actions),

2) Verify Right to Use, (this avoids likelihood of confusion refusal office actions and others)

3) Verify Right to Register, (this avoids many types of refusals including merely descriptive, deceptively misdescriptive, geographically descriptive and others that can often be predicted)

 4) Verify the potential mark (as currently used) Functions As A Mark, and (this avoids specimens refusals, trade name refusals, and others. The USPTO is looking for valid use not just any use of a mark.)

5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing. (This avoids office actions to correct incorrect IDs  which can slow down a registration. Incorrect IDs  may be corrected during the prosecution of a trademark if they do not materially alter the mark or the ID. Correcting problems before application saves time and money. Filing in a new class after an application has been submitted to cure a problem ID is the same price as a new application in that class.)

*We don’t stop here but this is a good start!

Call us at 1-651-500-7590 for a Strong Trademark. A Strong Trademark is Not Just a tool to increase sales to customers–it is also easier to sell to your investors & licensees. See Why Should I Have A Trademark Attorney Answer My Office Action if you have already applied and been refused.

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Call 1-651-500-7590 or email for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

Evolved Means, Method or Format-Is your trademark registration obsolete?

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Chart of Patent vs. Trade Secret

Patent or Trademark Assignments

Trademark Disclaimers   Trademark Dilution     TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Cease and Desist

Patent, Trademark & Copyright Inventory Forms

USPTO Search Method for Likelihood of Confusion

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

How to Keep A Trade Secret

Decrease Your Vulnerability to Cancellation

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Opposition Pleadings    UDRP Elements    

Oppositions-The Underdog    Misc Changes to TTAB Rules 2017

How To Answer A Trademark Cease and Desist Letter

Trademark Integrity: Are your IP Assets Vulnerable?

Trademark Refusals    Does not Function as a Mark Refusals

Insurance Extension  Advantages of ®

How to Respond to Office Actions  Final Refusal

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $224 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Trademark-Request for Reconsideration

Why Not Just Patents? Functional Trademarks   How to Trademark     

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

Valid/Invalid Use of Trademarks     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 TTAB Document Service  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

 Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS, TEAS RF and TEAS plus  

Extension of Time to Oppose?

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal

What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks  

Likelihood of Confusion 2d  TMOG Trademark Tuesday

Acquired Distinctiveness  2(f) or 2(f) in part

Merely Descriptive Trademarks  

Merely Descriptive Refusals

ID of Goods and Services see also Headings (list) of International Trademark Classes

Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses

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