IP: USPTO asks for comments on application requirements for TLDs marks

The USPTO's examination guide will become official policy guidance to trademark examiners and practitioners and will illustrate its policies and rules.

The United States Patent and Trademark Office (USPTO) is seeking input on registrability and examination requirements for trademark applications consisting of a top-level domain name (TLD).

The examination guide, “Applications for Marks Comprised of gTLDs for Domain Name Registration or Registry Services,” when finalized, will become official USPTO policy guidance to trademark examiners and practitioners and will illustrate its policies and rules. The comment period closes on Sept. 8, 2013.

Under current policy, the USPTO would not permit trademark registration of a mark composed solely of a TLD for “domain name registry services” (e.g., the services of registering .com domain names), generally refusing any such application on the ground that the TLD would not be perceived as a mark. This prior policy relied, in part, on the premise that generic TLDs “typically were merely abbreviations of the class of intended users of the gTLD (e.g., “.com” for commercial entities, “.gov” for government agencies, etc.) or subject matter of the domain space (e.g., “.edu” for educational institutions).”

The Internet Corporation for Assigned Names and Numbers (ICANN)’s expansion of TLDs means that new words will be added to the right of the dot, including those of well-known brand names. As a result, the USPTO recognized that these new TLDs may be able to serve as an indicator of source and that it should allow registration of marks comprised of a TLD in certain circumstances. The proposed USPTO policy still requires that an application of a TLD for domain-name registration or registry services should be initially refused on grounds that the applied-for mark fails to function as a trademark, because consumers are more likely to perceive the mark as simply a web address. However, the applicant may overcome such a refusal by providing evidence that the applied-for mark will be perceived as a source identifier.

The proposed USPTO policy states that an applicant can satisfy its evidentiary burden by submitting a certificate of a current trademark registration on the Principle Registry for the same mark for goods or services that are related to the identified subject matter of the websites to be registered via the applied for domain name registry/registration services. The submitted U.S. registration must be the same but does not have to include a “.” or “dot”. Also, the submitted U.S. registration cannot contain other wording, and must not include a disclaimer of such mark. The registration may be registered pursuant to Section 2(f) of the Trademark Act.

Furthermore, the applicant will be required to limit its identification of services to the “field of use” for the goods/services that are the subject of the submitted prior registration(s). The examination guide provides, for example, that if the applicant submits prior registrations identifying its goods as “automobiles” and its services as “automobile dealerships,” the services in the application may be identified as “domain-name registration services for websites featuring automobiles and information about automobiles.” However, the applicant may not identify its services as either “domain-name registration services for websites featuring information about restaurants” or merely as “domain name registration services.”

In addition, because the USPTO believes that consumers are unlikely to view new TLDs as marks, the applicant must establish that consumers are sufficiently familiar with the applied-for TLD as a trademark such that they will transfer the source recognition even to domain name registration or registry services. The examination guide provides that such evidence may include examples of advertising and promotional materials that specifically promote the mark shown in the application, with or without the “.” or “dot,” as a trademark or service mark in the United States; dollar figures for advertising devoted to such promotion; and/or sworn consumer statements of recognition of the applied-for mark as a trademark or service mark.

Lastly, the applicant must show first that it has entered into a currently valid agreement with ICANN (a “Registry Agreement”), designating the applicant as the entity responsible for operation of the registry, maintaining the database and generating the zone file (“Registry Operator”) for the gTLD identified by the mark). It also must show that the identified services will be primarily for the benefit of others. The examination guide provides guidance that “others” must be broader than just the applicant’s employees or for the applicant’s marketing initiatives, but may include applicant’s affiliated distributors.

The draft of the “Applications for Marks Comprised of gTLDs for Domain Name Registration or Registry Services” examination guide is available here. This guide contains hyperlinks in each section that link to a website where one may register and then post comments about the guide’s section.

Contributing Author

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John McElwaine

John C. McElwaine is a partner and intellectual property attorney at Nelson Mullins Riley & Scarborough, LLP (Charleston, S.C.). He devotes his practice to Internet,...

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