If a trademark owner has acquired a federal registration for a mark, there is little to be gained from registering the “.com” version of that mark. For example, if a company sells books under the federally registered mark ReadMe, it is not necessary to federally register its domain name ReadMe.com when the company sells books at its website. Why? The owner of a federally registered trademark can stop others from using the mark for similar goods or services whether they are sold online or off. In addition, the PTO requires that applicants disclaim .com in order to prevent any person from claiming a proprietary right to this generic term.
EXAMPLE: Tom federally registers Loudness as a trademark for his line of men’s wear. Tom later acquires the domain name Loudness.com to sell his men’s wear online. Tom does not need to federally register Loudness.com because his federal registration for Loudness permits him to stop others from selling men’s wear with a confusingly similar mark either in stores or on the Internet. Similarly, if a competitor registers Loudness.net, Tom’s federal registration will permit him to stop the competing domain name use.
A company with a federally registered trademark expanding its product line to include new products can file additional federal registrations for the trademark in these new classes of goods, but there is no reason to register the .com version of the mark. It is only recommended that the .com version of a federally registered trademark be filed if the company is establishing some service unique to its Internet business.
EXAMPLE: Tom federally registers Loudness as a trademark for his line of men’s wear. Tom later acquires the domain name Loudness.com to sell his men’s wear directly to consumers. Tom expands his website to include an interactive shopping guide that allows consumers to order custom-made men’s wear. When the user uploads a picture of himself, he sees what he will look like in the men’s wear. Tom should federally register Loudness.com because the domain name is now being used as an identifier for shopping services.