I own a website that provides free services including a listserv and
other features.  I would like to trademark the name of the website
(not the domain name, just the website's name), under United States
federal law  (US Patent Office).

My website currently offers space for banner advertising under a CPM
(cost per thousand) model.  In addition, I may possibly (not likely,
but possibly) offer a membership subscription to a newsletter or
online magazine as an extension of the website's features for a yearly
fee.  I may also include an online store offering mugs, shirts and
other items of interest, but again I may not.

Under these conditions, would I be eligible to apply for a trademark
to protect my website's name, and ensure I won't lose it to future
businesses or entities who might want to take the rights to the
website name away from me, forcing me to find another name to us? 
Most importantly, does the website name qualify as a SERVICE MARK or
as a TRADEMARK?

Please include links to resources that support your answer.  It would
also be extremely helpful if you can show links that specifically
address trademarking a website name that is either not commercial or
only partially commercial in nature.  Some examples of those who have
successfully registered the trademark name of their website, where the
only source of revenue is through banner advertising would be great,
but not mandatory.   Thanks in advance!

Berean:

Thanks for choosing Google Answers for your research needs. It has
been a pleasure to research this for you.

For your domain name to function as a trademark, it would have to be a
unique mark aside from simply being used to access your site. More
information about this is found here:


"If I have a domain name, do I have a trademark?

No, a domain name is not the same thing as a trademark. Use of a
domain name merely as an informational part of the domain holder's
Internet address does not qualify as trademark use. In order to
qualify as a trademark or service mark, the domain name must function
as a mark, that is, it must serve as an indicator of source and not
merely as an informational part of an Internet web address. If the
domain name functions separately as an indicator of source, the domain
name may be registered with the Patent and Trademark Office as a
trademark or service mark."

   http://www.inta.org/basics/ip/domnvtm.shtml

All of the information you need to know about trademarks can be found
at "Basic Facts About Trademarks" on the USPTO's site at:

   http://www.uspto.gov/web/offices/tac/doc/basic/index.html

You don't need to take any special arrangement to get a "trademark"
(™). A trademark is granted automatically by using the TM symbol
in combination with any legitimate use of the mark. What the USPTO
handles is Registered Trademarks (®). This grants you certain
legal rights that owners of simple, unregistered trademarks don't
have.

   http://www.uspto.gov/web/offices/tac/doc/basic/register.htm

As for the question of "Service Mark" or "Trademark", it would seem to
be a service mark. A service mark it a type of trademark which
uniquely identifies a service. I don't know much about your situation,
but if it were "Joe's Word Processor", that would be a trademark, but
"Joe's Software Downloads" would be a service mark.

"A service mark is similar to a trademark except that it identifies
and distinguishes the services of one provider from another. For
example, a McDonald’s hamburger is a trade name and a McDonald’s
restaurant is a service mark, because the latter identifies McDonald’s
restaurant services. For most practical purposes, trademarks and
service marks are treated similarly."
   
   http://www.lawcommerce.com/research/faq_diff_smTm.asp

"Trademarks? Service marks? What is the difference?
While all marks are commonly referred to as  trademarks, several
different types actually exist. While trademarks and service marks are
the best known types, there are also several others:

- Trademarks are used on products (goods) (SARA LEE cakes, DELL
computers).

- Service Marks are used to identify services (MCDONALD'S restaurant,
WALT DISNEY WORLD amusement park)."

   http://www.trademark.com/new_tmdocs/faq.html

Search Strategy:

Google Search: "About Trademarks" site:uspto.gov
Google Search: "service mark" "trademark" difference

Good luck with your mark. If you feel that there's something I missed,
please drop a request for clarification, and I'd be glad to clarify.

--
Sam Kennedy

---

Request for Answer Clarification by berean-ga on 26 May 2002 07:02 PDT

The answer was somewhat helpful, but I need to clarify what I asked. 
Note I said, "I would like to trademark the name of the website
(NOT THE DOMAIN NAME, just the website's name)  For example, say my
website is at http://www.bluestreak.com.  The name of my website is
Blustreak.  I would then like to trademark the word "Bluestreak."  See
what I mean?

The issue here is if you can trademark this name, where the name
represents a web portal whose only "commerce" is in banner
advertising.  Since a trademark is business oriented, would it stll be
possible to trademark the name even if i'm not really selling
anything, or am I just wasting my time?  That's the issue here.  The
name represents a service, but then again it's a free service (other
than banner advertising).

---

Clarification of Answer by samrolken-ga on 26 May 2002 18:38 PDT

A trademark is a word, phrase, symbol or design, or a combination of
words, phrases, symbols or designs, that identifies and distinguishes
the source of the goods of one party from those of others.

http://www.uspto.gov/web/offices/tac/doc/basic/trade_defin.htm

If you provide goods, then that applies to you. If you recieve money
in return for the service of showing banner ads, then you're a
business.

TV networks like ABC, CBS, NBC, etc. seem similar to your situation.
They don't sell the TV shows to the audience, but instead make their
money by advertising. Since they own trademarks, I assume that you
would be able to as well.

---

Clarification of Answer by samrolken-ga on 26 May 2002 18:47 PDT

I'll also point out that it doesn't exactly say that the registering
party has to be a business. The only thing it particularly mentions is
that they provide goods or services.

http://www.uspto.gov/web/offices/tac/doc/basic/register.htm

Thanks for the help!

Your question was answered very well by samrolken.
Let me add some thing here. May be samrolken may give some input to
you.

I had a similar situation, but I was successful in going around the
bush. Let me tell my story. I have a website www.ezmathtrix.com. Since
I can not trademark the url, I am doing just the name EzMathTrix word.
May be you can do the same.

EzMathTrix.com

Hi, Berean --

Assuming your chosen domain name meets the trademark qualifications,
you can strengthen your claim to the trademark by registering in the
state where your business is registered (and any other states where
you primarily do business).

Each state has different requirements, but you can find them at:
www.state.XX.us (where "XX" is the state abbreviation).

Then look for a section on "doing business in XX," "starting a
business," "corporations," or "Secretary of State," and then look for
a link to online forms, where you can usually find the Tradename
Registration Form.

For example, in Vermont, business tradenames are registered through
the  Secretary of State's office, and the registration fee is $20. The
VT form can be found at:
http://www.sec.state.vt.us/tutor/dobiz/forms/tradeapp.htm . While not
necessary, having one or more of the state registrations will
strengthen your position when applying for a federal trademark.

Hope this helps.
Captvatng1

Trademarking EzMathTrix should be not be a problem because you
obviously sell goods and services on your site.  In my case, I dont
sell anything other than banner advertising.  I wonder though if that
would still be enough to qualify under the definition of "commerce"
accordingly to federal law.  Any revenues from banner advertising
would go to maintaining the website, so it's still relatively
non-profit.  That seems to be my achilles heel here :D

However, registering a trademark in my state might be a good first
step.  I ahve to find out more.

Not sure this is the area you are looking for but something that no
one
mentioned on Trademarks is that, as I understand it:
1) Cannot be descriptive of the product or service to the point of
preventing competition
2) Must have trade exist
3) Cannot cause confusion in the eyes of the consumer.
Given these, I do not see why you could not Trademark that name, but
the Trademark Bluestreak would only apply to those activities where
confusion to the consumer would apply, like selling banner ads.  I
could go start a company down the street from you as Bluestreak
Lawn Mowing and not infringe on your Trademark.  With the doman sealed
up, I'd almost wonder why you'd bother with your time and the 300
bucks
that I think the Trademark costs (or is it more?).  You'd be better
off
sealing up all the other similar domains for 8-12 bucks apiece.
To sum up my advice, not sure of the value of this, but I'd spent
200 bucks and see a good IP lawyer.  Probably give you an hour
for free then spent the next hour understanding options.  Good luck.