Frequently, a client will come to me and say that they have come up with a name that they think is great for their business or for a product or service that they intend to offer and have gone ahead and registered the domain name. While it doesn’t cost much to register a .COM domain, I would suggest that the client has done things in reverse.
If the domain name is intended to be the name of your business, prior to selecting that domain name, you should check the records of your state Secretary of State to determine if the business name is available. In Illinois the business name must be distinguishable upon the records of our Secretary of State from the corporate name or assumed corporate name of an existing Illinois corporation or a foreign corporation authorized to transact business in Illinois or the name of a limited liability company in those records, or a name that is otherwise currently registered or reserved.
In addition, if the corporate name is also intended to be used as the name of the products or services that you sell, that is, it is intended to be affixed to your product or its labeling or used in connection with marketing the services that you provide, i.e., used as a trademark, you should conduct a trademark search as well. For example, General Motors is the name of the corporation that makes Chevrolets, Cadillacs and Buicks. However, the General Motors name is not generally used as a trademark on those vehicles. On the other hand, if you fuel up one of those vehicles at a Shell gas station, Shell Oil Company is the trade name of the U.S. based subsidiary of Royal Dutch Shell, a multi-national oil and gas company with headquarters in The Hague, Netherlands, and SHELL is also Shell’s federally registered trademark for “vehicle gasoline service station services.” The purpose of conducting such a search should be to determine if that name or a confusingly similar name is the subject of either a federally registered trademark or an application to register a trademark with the United States Patent and Trademark Office, whether it is the subject of a state trademark registration or whether it is in use but not registered. If someone is using the identical or a similar mark on related goods or services, i.e., goods or services that would are customarily sold together by the same supplier or manufacturer, then that prior user or federal trademark applicant could object to your use of your proposed mark and while it may not cost much to change your domain name, it probably will cost a lot more to create a new website or take down all of your signs if your are a brick and mortar business. In addition if it is determined as a result of your trademark search that your proposed name is available for federal registration and that name will be used in connection with the marketing of goods and services, one of the benefits of a federal trademark registration is that it is prima facie evidence of the registrant’s exclusive right to use its mark throughout the U.S. Therefore, not only would you register your domain name at that point but I would recommend, assuming that it is available, that you go ahead and federally register it.
Note that the name may not be immoral, deceptive or scandalous, disparage a person or institution, merely describe the goods or services in connection with which it is intended to be used or be primarily geographically descriptive of the goods.
Further, the domain name should be memorable and easy to spell. While adding descriptive words that immediately evoke what you are trying to sell on your website and identify the content of your website may seem like a good idea for a domain name, if you follow-up by trying to register that domain name, you run the risk that the U.S. Patent and Trademark Office will refuse to register it, at least not until it has become so recognized in the marketplace that it loses its general descriptive context and becomes identified with you. For example, the owners of HOTEL.COM had to submit 160 pages of evidence, including videocassettes of television advertising to get a federal service mark registration for their mark. Another travel website, ORBITZ.COM, merely had to submit a three page response to deal with some technicalities with the Patent Office to receive its registration. GOOGLE and AMAZON are examples of highly memorable domain names that are distinctive trademarks and do not describe the content present thereon.
If a .COM suffix is not available, you can show your national identity with a .us domain name; if you are in the business of presenting streaming video, for example, you can use the .tv domain extension. You also now have available the new generic top level domains. See http://newgtlds.icann.org/en/program-status/delegated-strings These include such domains as .PIZZA, .BUSINESS, .RESTAURANT, .HEALTHCARE, .NYC, .LAWYER, .SOFTWARE, .DENTIST, .FITNESS, .FINANCIAL, .INVESTMENTS, .EDUCATION, .INTERNATIONAL, .SEXY and .CLOTHING among others. Remember, though, that web searchers are still used to adding a .COM to a brand name to find it on the web so it may take some non-web marketing to bring people to your site using these domains. However, if you own a pizza place or a chain of urgent care centers, it’s going to be tempting to use .PIZZA or .HEALTHCARE as part of your domain. To be successful though, say your business name is Tony’s Pizza or Spectrum Healthcare, you will need to train your potential customers and current customers to insert the dot in the right place, to type in TONYS.PIZZA or SPECTRUM.HEALTHCARE and not have them leave the dot out and look for the COM. See http://t.co/x1Jpq1E2YN
Also, make it easy on your customers or potential customers. Keep things simple so that your customers can find you and type in the right name. Don’t register TONYSPIZZA2GO.COM as they will have to remember to type in the numeral as opposed to the word “to” and add “2go” to order to take-out on line. Stick to TONYSPIZZA.COM or maybe TONYSCHICAGOPIZZA.COM if you’re located in Chicago or sell Chicago-style pizza and dedicate a portion of your site to ordering pizza on-line for takeout. Remember that letters and digits from “0” to “9” are registrable as well as hyphens. Capitalization doesn’t make a difference and while hyphens are also allowed, it is very easy for people to forget to type the hyphens. Now, non-English character domain names are available as well. See http://www.dynadot.com/domain/idn-search.html
Finally, is the name easily pronounceable and not easily confused with another domain name? Also, even if your trademark search (See above.) finds no confusingly similar names, you should be careful to make sure that there is not a confusingly similar domain name out there. For example, make sure that a competitor is not using your same domain name with which you are using the .com suffix with a .net suffix or vice versa, or if you’re in the pizza business, with a .pizza suffix or if you’re in the porn business with a .xxx suffix.
Hopefully, your business will be successful and around for a long time. You want loyal customers. And to keep them loyal, you need a strong, distinctive easily remembered and not easily confused name; that’s going to be around for a long time…not a name that you are going to have to change because your lawyer received a cease and desist letter from a competitor or because you are losing business to the listing immediately above you when someone types your name into Google. See http://markscounsel.com/tips-from-a-seasoned-lawyer/
