Trademark Registration VS. Domain Name Registration

Dave MacDonell

Dave MacDonell

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Domain registration does not equal trademark registration

Clients often ask me if there’s anything they can do, aside from registering their trademark, to protect their brand. I usually suggest domain name registration if they haven’t already done it. Domain name registration can be an important part of brand protection, but it has to be done very carefully. The choice of domain name can make or break a brand, and making the right choice of domain name isn’t always obvious. Many of my clients struggle with this. Since your domain name can be one of your most important business assets – domain names can sell for thousands of dollars – it is important to take proactive steps to secure the best domain possible.  Here are some strategies to do just that:

The first thing I advise clients when considering domain name registration is that they obtain domain names as soon as possible. Preferred top-level domains are limited in number and tend to get scooped up quickly.

The second thing I advise clients is to obtain as many domain names as possible. This will create a bubble around your key domain name(s).  By registering multiple domain names – variations on your chosen domain name – you will prevent competitors from misappropriating a similar or same domain. Some clients choose to have all of their domain names point to their main website. In doing so, they increase the likelihood that consumers will be able to find them on the Internet through a variety of search engine keyword searches.

The third thing I tell my clients is to register multiple domain names under multiple domain extensions. Of course, you’ll want to obtain the most popular top-level domains, such as “the trilogy”: .com, .org, .net. You should also register the domain extension relevant to your geographic region. For example the majority of my clients are Canadians operating their businesses in Canada. These clients typically register domains in addition, .net and .org.  This will prevent competitors from registering the same domain name with a different extension, and you’ll own all possible variations of your chosen domain.

Another advantage to registering multiple domain names is that you secure them for the future. Several clients have started out operating only in Canada and then expanded years later into other markets such as the US. The fact that they already had their .com addresses made that expansion easier. Had they not registered their .com or .net addresses from the outset, they may have faced a dispute or had to purchase the domains from another owner at a much higher cost… or, even worse, been forced to rebrand.

Depending on the situation, I sometimes even advise clients to register their slogans as domain names or the French equivalent of their name as a domain. Not every client needs to do this, and your trademark lawyer can advise you specifically as to whether it’s something you should do. As an example, an organization that operates as much in Québec or offering services in the French language would be well advised to register their French domain name. Businesses or organizations that rely on catchy slogans would also be well advised to register their slogan.

Finally, I advise clients to register their trademark Canada. A proper trademark registration always starts with an extensive trademark search. It’s best to seek the advice of an experienced Toronto trademark lawyer, qualified to conduct such a search. A good trademark search will also include extensive domain name searches. This search will help reveal any competitor businesses or organizations using same or similar names, as well as the likelihood of confusion in the marketplace with the chosen name. It is important to conduct a proper trademark search in every country in which you wish to operate. For example if your business operates throughout North America, you’ll need a trademark search in Canada and the US. This means that you should look for a trademark lawyer who is qualified to conduct searches both in Canada and the US.

In addition to domain registration, you should consider if your trademark is vulnerable to infringement.

The final step is to register the trademark to your domain name. You should apply for trademark registration in Canada, and in any foreign country in which you operate or plan to operate your business. This will protect your domain name from future challenges under the UDRP or CIRA.

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