CORPORATE NAMES, DOMAIN NAMES AND TRADEMARKS-- USE AND REGISTRATION REQUIRED

A business' right to use a corporate name and register that name as an Internet domain name (an Internet address for advertising or electronic commerce) is an important issue for owners and corporate attorneys. The following questions are common: If a business incorporates under a name or registers a fictitious name, does it have a right to conduct business and advertise under that name? If a business has a corporate name or a fictitious name registration, does it have a right to stop others from using an identical Internet domain name? What is the relationship between a federal trademark, a corporate name and an Internet domain name?

Corporate names and fictitious names for businesses (such as a d/b/a or "doing business as" tradename) are filed with the Secretary of State for the State of Florida. ⁽¹⁾ Businesses which use a tradename other than their corporate name or the individual name of the business proprietor must register the tradename as a fictitious name with the Secretary of State. ⁽²⁾ Companies which are incorporated in states other than the State of Florida, commonly called "foreign corporations," should register as a foreign corporation with the Secretary of State. ⁽³⁾

Confusion over the right to use corporate names (or fictitious names), Internet domain names and trademarks arise, in part, due to the different purposes of the various statutes and the contractual assignment of Internet domain names. Domain names are currently assigned by government supported, private entity, Network Solutions, Inc. (NSI, sometimes known as InterNIC) to provide some order to the Internet. ⁽⁴⁾ State laws establishing corporate entities protect individuals in the corporation from liability due to their business activities. Fictitious name statutes enable members of the public to trace the true owner of a business using a tradename or fictitious name. Trademark law seeks to avoid consumer confusion regarding the source and identification of goods and services from different businesses. Hence, when the Secretary of State approves a corporate name for a business, the official does not determine whether that new corporate name is confusingly similar to other corporate names outside the State of Florida, other out-of-state tradenames, federally registered trademarks or other out-of-state trademarks. ⁽⁵⁾

Consumer confusion problems sometimes arise due to the use in business of the same or similar name by different corporations thereby causing confusion when consumers on the Internet look for a certain company and find another. These conflicts represent classic trademark law problems. Trademark law focuses on (a) the conflicting marks, (b) the precise nature of the marked goods or services placed into the stream of commerce, and (c) the various channels of trade for those goods or services (including end users and intermediary merchants). ⁽⁶⁾ Since the Internet has greatly expanded a business' ability to geographically advertise its goods and promote itself and has "flattened out" the distribution systems, disputes over domain names, corporate names and trademarks are growing.

Internet domain names are assigned by NSI based upon a first come, first served basis for a small registration fee. ⁽⁷⁾ Use of a domain name is not required. This non-use is similar to filing for a corporate name (which does not require the sale of goods or services). In contrast, a trademark must be used in commerce before its owner obtains enforceable rights against other using the same or similar mark. If the business reserving the domain name Internet address has an existing Internet website, NSI will activate the newly assigned domain name such that the domain name is linked or points the public to the business' website. Operationally, any person communicating over the Internet and inputting the newly assigned domain name will be directed and automatically transported to the business' website.

Current dispute resolution rules at NSI provide that the first business to register the domain name owns the domain name unless the complaining party has a federal trademark registration which establishes earlier national rights. ⁽⁸⁾ Under federal trademark law, the registrant (an owner of a federally registered mark) is granted national rights as of the trademark application filing date. ⁽⁹⁾ NSI also requires that the registered trademark be identical to the domain name subject of the dispute. To protect a corporate name on the Internet now and in the future, the federal trademark registration with an early application date is critical.

A business can file either a use-based federal trademark application or an intent-to-use application for its mark or corporate name. ⁽¹⁰⁾ A use-based application is available if the business applicant has used the mark on the goods or in connection with the services in interstate commerce. ⁽¹¹⁾ Otherwise, an intent-to-use trademark application may be filed if the business has a bona fide intent to use the mark. ⁽¹²⁾ If no one opposes registration of a use-based application and the mark complies with other provisions of a trademark law, ⁽¹³⁾ a trademark application will mature into a registration in about 9 - 14 months. With respect to intent-to-use trademark applications, the applicant must use the mark on the identified goods or services (or a portion thereof) within 2 - 4 years of its application date. Once the mark is used in interstate commerce and certain formalities are met, the mark is registered. Accordingly, there is a significant time delay between the application date and the registration date for a federal trademark. In the NSI dispute resolution process, state registered trademarks are not relevant. ⁽¹⁴⁾

Conflicts between a corporate name and a registered trademark (or a conflicting corporate name in use) are resolved based on the trademark law principles of (a) first use of the mark, (b) geographic scope of use, (c) the goods or services sold by each party, and (d) the filing date of the registered mark. ⁽¹⁵⁾ The first business owner to use a mark in its business in a certain geographic region owns the rights to that mark in that region unless the subsequent user in that region has federally registered the mark at an earlier time thereby establishing earlier national rights. ⁽¹⁶⁾ Filing for a corporate name does not guarantee rights to the name. Early use of the name in business on goods or services or early federal registration establishes ownership to the name.

The combination of an exploding number of Internet domain names, universal access to the Internet by consumers and the ability of consumers, whether businesses or individuals, to purchase goods and services from around the world, greatly increase the number and degree of conflicts between corporate, Internet domain names and trademarks.

Answers to the questions raised earlier can be found in the following series of simple statements. Identify a corporate name or a fictitious name. Conduct a corporate or fictitious name search with the Secretary of State for the State of Florida. Conduct an Internet domain name search at NSI. Conduct a federal trademark search to determine whether the corporate name can be used in connection with the sale of the goods or services. ⁽¹⁷⁾ Secure the corporate name or fictitious name with the Secretary of State. Reserve the domain name with NSI. File a federal trademark application, either an intent-to use application or a use based application, as soon as possible. ⁽¹⁸⁾ If the business has been using a corporate name, conduct a domain name search at NSI to determine whether the domain name is available. Whether it is available or not, prepare and file a federal trademark application. With the advent of new Internet domain names having different three letter extensions, for example, "bus" and "stor," there will be more instances of conflict between corporate names and Internet domain names. There is a reasonable likelihood that the NSI dispute resolution procedures which enable a federal registrant to "trump" a domain name owner, will be continued or carried over into other domain name registration systems. It behooves a business owner to federally register a trademark for its corporate name.

About the Author:

Robert C. Kain, Jr., is an intellectual property attorney specializing in patents, trademarks, copyrights, computer and Internet law matters in Ft. Lauderdale, FL. He has practiced exclusively in this field for almost 20 years, is a registered patent attorney with the Patent and Trademark Office and holds a J.D., a B.E. in Electrical Engineering and a B.S. degree. His firm, Robert C. Kain, P.A., has a website at rckain.com. (1-800-846-0900).

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1. §607.0401, Fla. Stat. (1999); §865.09, Fla. Stat. (1998).

2. §865.09, Fla. Stat. (1998).

3. §607.1506, Fla. Stat. (1997).

4. See www.networksolutions.com. Other private companies have been granted the right to assign Internet domain names, but these new registration systems have just come on line.

5. Florida law does seek to avoid local confusion regarding corporate names, tradenames and trademarks in the state. A corporate name "must be distinguishable from the names of all other entities or filings, except fictitious name registrations pursuant to § 865.09, organized, registered, or reserved under the laws of this state, which names are on file with the Division of Corporations." §607.0401, Fla. Stat. (1993). The State does not search out-of-state names, trademarks or domain names on the Internet. Florida's fictitious name statute has a similar provision. §865.09, Fla. Stat. (1998).

6. The issue of deliberate or intentional confusion caused by one party using another party's mark to obtain the benefit of the other party's fame or reputation is not the subject of this article. The party's intent is sometimes an issue in trademark disputes.

7. Some examples of corporate domain names which are suffixes to the Internet prefix "www" are ibm.com; ge.com; fpl.com; deltaairlines.com and pilsbury.com.

8. See Domain Name Dispute Resolution Rules at www.networksolutions.com.

9. Federal trademark law establishes constructive national rights as of the applicant's filing date after the mark becomes a registered mark. 15 U.S.C. §1057(c).

10. Federal trademarks are granted for any type of mark (word, design, sound, shape of container, or smell) that is unique to a particular business and which is used by that business as a mark to identify and distinguish its goods or services from other goods or services offered by other businesses in that field. 15 U.S.C. §1051.

11. 15 U.S.C. §1051(a)(1).

12. 15 U.S.C. §1051(b)(1).

13. For example, trademark law provides that the mark cannot be scandalous or merely descriptive. 15 U.S.C. §1052(a) and (e). Also, the mark sought to be registered must not be confusingly similar to other registered or applied for marks. 35 U.S.C. §1052(d). The test for confusion is as simple and as complex as the answer to the following question: Would a consumer confuse the goods or services of either company in light of the respective marks of those companies?

14. Although Florida has its own trademark statute, Florida courts have restricted a Florida state trademark registrant's rights to the specific geographic area in which the registrant does business. Abner's Intern., Inc. v. Abner's Beef House Corp., 220 So 2d 683 (3^rd Dist. Fla. App. 1969), quashed on other grounds 227 So.2d 865. The rights of a Florida registrant are equivalent to common law trademark rights arising in the absence of any type of registration.

15. In this article, the corporate tradename and conflicting mark is considered to be identical. Disputes regarding similar, but not identical, marks include an analysis of the similarities and differences between the two marks. With respect to domain name disputes, NSI rules support a federal registrant or owner only if the registered mark is identical to the sought after domain name.

16. Early federal rights are obtained as of the filing date of the federal trademark application. 15 U.S.C. §1057(c).

17. A typical charge for full trademark search (through both federal registers, all state trademark registers and common law sources) with an opinion is $650.00.

18. A typical charge including services and the customary government fee for a federal trademark application is $875.00.