IP: USPTO asks for comments on application requirements for TLDs marks
The United States Patent and Trademark Office is seeking input on registrability and examination requirements for trademark applications consisting of a top-level domain name.
September 03, 2013 at 05:00 AM
8 minute read
The original version of this story was published on Law.com
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.
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.
This content has been archived. It is available through our partners, LexisNexis® and Bloomberg Law.
To view this content, please continue to their sites.
Not a Lexis Subscriber?
Subscribe Now
Not a Bloomberg Law Subscriber?
Subscribe Now
NOT FOR REPRINT
© 2024 ALM Global, LLC, All Rights Reserved. Request academic re-use from www.copyright.com. All other uses, submit a request to [email protected]. For more information visit Asset & Logo Licensing.
You Might Like
View AllRecent Layoff/Callback Litigation Underscores Perils Employers Face From Every Direction
5 minute readOld Laws, New Tricks: Lawyers Using Patchwork of Creative Legal Theories to Target New Tech
In-House Gurus Say Inattention to Human Side of Tech Adoption Can Derail Best-Laid Plans
5 minute readNike Promotes Legal Chief to Marketing Chief as New CEO Launches Turnaround
Trending Stories
- 1Infant Formula Judge Sanctions Kirkland's Jim Hurst: 'Overtly Crossed the Lines'
- 2Abbott, Mead Johnson Win Defense Verdict Over Preemie Infant Formula
- 3Preparing Your Law Firm for 2025: Smart Ways to Embrace AI & Other Technologies
- 4Greenberg Traurig Initiates String of Suits Following JPMorgan Chase's 'Infinite Money Glitch'
- 5Data-Driven Legal Strategies
Who Got The Work
Michael G. Bongiorno, Andrew Scott Dulberg and Elizabeth E. Driscoll from Wilmer Cutler Pickering Hale and Dorr have stepped in to represent Symbotic Inc., an A.I.-enabled technology platform that focuses on increasing supply chain efficiency, and other defendants in a pending shareholder derivative lawsuit. The case, filed Oct. 2 in Massachusetts District Court by the Brown Law Firm on behalf of Stephen Austen, accuses certain officers and directors of misleading investors in regard to Symbotic's potential for margin growth by failing to disclose that the company was not equipped to timely deploy its systems or manage expenses through project delays. The case, assigned to U.S. District Judge Nathaniel M. Gorton, is 1:24-cv-12522, Austen v. Cohen et al.
Who Got The Work
Edmund Polubinski and Marie Killmond of Davis Polk & Wardwell have entered appearances for data platform software development company MongoDB and other defendants in a pending shareholder derivative lawsuit. The action, filed Oct. 7 in New York Southern District Court by the Brown Law Firm, accuses the company's directors and/or officers of falsely expressing confidence in the company’s restructuring of its sales incentive plan and downplaying the severity of decreases in its upfront commitments. The case is 1:24-cv-07594, Roy v. Ittycheria et al.
Who Got The Work
Amy O. Bruchs and Kurt F. Ellison of Michael Best & Friedrich have entered appearances for Epic Systems Corp. in a pending employment discrimination lawsuit. The suit was filed Sept. 7 in Wisconsin Western District Court by Levine Eisberner LLC and Siri & Glimstad on behalf of a project manager who claims that he was wrongfully terminated after applying for a religious exemption to the defendant's COVID-19 vaccine mandate. The case, assigned to U.S. Magistrate Judge Anita Marie Boor, is 3:24-cv-00630, Secker, Nathan v. Epic Systems Corporation.
Who Got The Work
David X. Sullivan, Thomas J. Finn and Gregory A. Hall from McCarter & English have entered appearances for Sunrun Installation Services in a pending civil rights lawsuit. The complaint was filed Sept. 4 in Connecticut District Court by attorney Robert M. Berke on behalf of former employee George Edward Steins, who was arrested and charged with employing an unregistered home improvement salesperson. The complaint alleges that had Sunrun informed the Connecticut Department of Consumer Protection that the plaintiff's employment had ended in 2017 and that he no longer held Sunrun's home improvement contractor license, he would not have been hit with charges, which were dismissed in May 2024. The case, assigned to U.S. District Judge Jeffrey A. Meyer, is 3:24-cv-01423, Steins v. Sunrun, Inc. et al.
Who Got The Work
Greenberg Traurig shareholder Joshua L. Raskin has entered an appearance for boohoo.com UK Ltd. in a pending patent infringement lawsuit. The suit, filed Sept. 3 in Texas Eastern District Court by Rozier Hardt McDonough on behalf of Alto Dynamics, asserts five patents related to an online shopping platform. The case, assigned to U.S. District Judge Rodney Gilstrap, is 2:24-cv-00719, Alto Dynamics, LLC v. boohoo.com UK Limited.
Featured Firms
Law Offices of Gary Martin Hays & Associates, P.C.
(470) 294-1674
Law Offices of Mark E. Salomone
(857) 444-6468
Smith & Hassler
(713) 739-1250