Just registering or making minimal use of a domain name, much less “parking” it, is not “use in commerce.” There’s got to be some… commerce! Most lawyers practicing in the area of trademark law know this, but LIKELIHOOD OF CONFUSION® exceeds ordinary aspirations and speaks directly to its people — the people who call up trademark lawyers and want to register trademarks based, indeed, on the names of websites not yet in being or even less.

So, when is use of a would-be trademark in a domain name “use in commerce”? Well, per Michael Atkins, now we know a little more about when it isn’t:


Atlas - Rockefeller CenterPlaintiff argued he had gained exclusive control over the use of the word “whisper” in the title of his project because he had acquired a service mark in his Web site domain name [whisperoftheblue.com] for “providing information, via the Internet, in the field of entertainment, namely, the development, production and distribution of motion picture films.”

The court disagreed. In June, Judge Jeffrey White denied Mr. Guichard’s motion for preliminary injunction because “his described use of the WHISPER OF THE BLUE mark does not satisfy the ‘use in commerce’ requirement necessary to establish priority of use. Although Plaintiff alleges that there have been multiple visits to his website since its launch on February 4, 2006, this minimal use does not establish ‘use in commerce’ as required to establish priority. There is no showing that Plaintiff has used his mark in the actual sale or advertising of services in commerce.”

Our advice is the same for 80-90% of people who make such inquiries: Build your business first! If there is a brand worth protecting, it will be because you have made it valuable by virtue, not of the Patent and Trademark Office, but of having generated at least a little commerce — money, busness, gelt! — under its name!

Most of these people never come back, and it’s not because they didn’t love the advice, or the one who gave it. It’s because they end up not building the business. Hey — LIKELIHOOD OF CONFUSION® has been there, and not-done that. I hope it works better next time. But in your case, at least I didn’t get you there $850 (plus disbursements) quicker.

In this great country, trademark rights and priority are established by use, not registration — the rest is commentary. Now, go and use!

By Ron Coleman

LIKELIHOOD OF CONFUSION blog author Ron Coleman is a member of Dhillon Law Group in their New York City and Montclair, New Jersey offices. He is a graduate of Northwestern University School of Law and Princeton University.