Examination Guide [ -13] Applications for Marks Comprised of gtlds for Domain Name Registration or Registry Services




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Draft – 6/25/2013




Examination Guide [^-13]

Applications for Marks Comprised of gTLDs for Domain Name Registration or Registry Services

[^ 2013]
This examination guide updates the policy and procedure relating to the USPTO’s handling of applications for marks comprised of a generic top-level domain name (“gTLD”), and sets forth the circumstances under which a mark consisting of a gTLD for domain name registration or registry services may be registered.
Please leave general comments or questions about the guide here.

I.generic top-level domain names for domain-name registration or registry services

Background


A top-level domain (“TLD”) is the string of letters in an Internet domain name that follows the last “.” or “dot” (e.g., in the URL “http://www.uspto.gov”, “.gov” is the TLD). If a TLD has three or more characters (i.e., it is not a “country code” TLD, such as “.ca” for Canada or “.jp” for Japan), it is known as a “generic top-level domain” or “gTLD.”1

USPTO policy has provided, in part, that:


If a mark is composed solely of a TLD for “domain name registry services” (e.g., the services of registering .com domain names), registration generally must be refused under Trademark Act §§1, 2, 3, and 45, 15 U.S.C. §§1051, 1052, 1053, and 1127, on the ground that the TLD would not be perceived as a mark.2
The policy relied, in part, on the premise that gTLDs 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).

Introduction of New gTLDs and Effect on USPTO Policy


Please discuss this section of the guide (as well as the background material) here.
The Internet Corporation for Assigned Names and Numbers (“ICANN”) has begun a program to introduce new gTLDs.3 Some of the new gTLDs under consideration may have significance as source identifiers. To the extent that some of the new gTLDs under consideration are comprised of existing registered trademarks or service marks that are already strong source identifiers in other fields of use, some of the premises underlying existing USPTO policy regarding the registration of gTLDs may no longer hold true for such gTLDs (e.g., a gTLD consisting of a coined mark is not an abbreviation of an entity type or class of intended user of domain space). Where the wording following the “.” or “dot” is already used as a trademark or service mark, the appearance of such marks as a gTLD may not negate the consumer perception of them as source indicators. Accordingly, the USPTO is amending its gTLD policy to allow, in some circumstances, for the registration of a mark consisting of a gTLD for domain-name registration or registry services.4

II.Updated USPTO Policy on gTLDs AS TRADEMARKS

Requirements for Trademark Registration


A mark composed solely of a gTLD for domain-name registration or registry services fails to function as a trademark because consumers are predisposed to view gTLDs as merely a portion of a web address rather than as an indicator of the source of domain-name registration or registry services. Therefore, registration of such marks must initially be refused under Trademark Act §§1, 2, 3, and 45, 15 U.S.C. §§1051, 1052, 1053, and 1127, on the ground that the gTLD would not be perceived as a mark. However, the applicant may, in some circumstances, avoid or overcome the refusal by providing evidence that the applied-for mark will be perceived as a source identifier. In addition, the applicant must show that: (i) 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, i.e., maintaining the database and generating the zone file (the “Registry Operator”) for the gTLD identified by the mark; and (ii) the identified services will be primarily for the benefit of others. All of the requirements, as described more fully below, must be satisfied.

Applicant Must Provide Evidence that the Applied-For Mark Will Be Perceived as a Source Identifier


Please discuss this section of the guide here.


  1. Prior Registration(s) of the same Mark for goods or services in the same field of use as the domain name registration/registry services

The applicant must submit evidence that the gTLD shown in the applied-for mark is the subject of one or more currently active prior U.S. registrations 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 by establishing:


  1. Ownership of a currently active U.S. registration on the Principal Register for the same mark based on use in commerce under Section 1 of the Trademark Act5; or

  2. Ownership of a U.S. registration on the Principal Register for the same mark based on either a foreign registration under Section 44(e) of the Trademark Act6 for which an affidavit of use in commerce under Section 8 of the Trademark Act7 has been accepted or a Madrid Protocol registration under Section 66(a) of the Trademark Act8 for which an affidavit of use in commerce under Section 71 of the Trademark Act9 has been accepted.


The submitted prior U.S. registration must show the same mark as shown in the applied-for mark. However, the lack of a “.” or “dot” in the submitted prior U.S. registration is not determinative as to whether or not the mark in the prior U.S. registration is the same as the mark in the application. In addition, the submitted prior U.S. registration must contain only the wording that makes up the gTLD, and must not include a disclaimer of such wording. The registration may be registered pursuant to Section 2(f) of the Trademark Act.10
Because a consumer’s ability to recognize a gTLD in an application as a source identifying mark is based, in part, on the applicant’s prior registration(s) for the same mark, the applicant must limit the “field of use” for the identified domain-name registration or registry services to fields that are related to the goods/services listed in the submitted prior registration(s). For example, 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.”
If the applicant does not specify a field of use for the identified domain name registration or domain name registry services, or specifies a field of use that includes goods/services not listed in the prior registration(s), the examining attorney must require the applicant to amend the identification of services so as to indicate only a field of use that is related to, goods/services that are the subject of the submitted prior registration(s). In amending the identification, the applicant may not broaden the scope of the identification.11
If the application is not amended, or cannot be amended, to specify a field of use that is related to the goods/services listed in the submitted prior registration(s), the examining attorney must refuse registration under Trademark Act §§1, 2, 3, and 45 because, absent a relevant prior registration, the gTLD would not be perceived by consumers as a mark.


  1. Additional Proof that the Mark Used as a gTLD Will Be Perceived as a Mark

In addition to the prior registration(s), the applicant must also submit a significant amount of additional evidence relevant to the issue of whether the mark, with or without the “.” or “dot,” will immediately function to identify the source of the domain-name registration or domain-name registry services rather than merely being perceived as a portion of an Internet domain name that can be acquired through applicant’s services. Because consumers are so highly conditioned and may be predisposed to view gTLDs as non-source indicating, the applicant must show that consumers already will be so familiar with the wording as a mark, that they will transfer the source recognition even to the domain name registration or registry services. Such relevant evidence may include, but is not limited to: 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.

Registry Agreement/ICANN Contract


Please discuss this section of the guide here.
If the applicant has not entered into a Registry Agreement with ICANN designating the applicant as the Registry Operator for the gTLD identified by the mark, consumers may be deceived by use of a particular gTLD as a mark. Consumers generally would believe that the applicant’s domain-name registration or registry services feature the gTLD in the proposed mark, and would consider its availability material in the purchase of these services. Therefore, to avoid a deceptiveness refusal under Section 2(a) of the Trademark Act,12 the applicant must: (i) submit evidence that it has entered into a currently valid Registry Agreement with ICANN, designating the applicant as the Registry Operator for the gTLD identified by the applied-for mark prior to registration; and (ii) indicate in the identification of services that the domain registration or domain registry services feature the gTLD shown in the mark.
If the application does not include a verified statement indicating that the applicant has either an active, or currently pending application for a, Registry Agreement with ICANN designating the applicant as the Registry Operator for the gTLD identified by the applied-for mark, the examining attorney must issue an Office action with an information request13 that requires the applicant to submit a verified statement indicating the following: (i) whether or not the applicant has in place, or has applied for, such a Registry Agreement with ICANN; and (ii) if the applicant has so applied, the current status of such application. The examining attorney should include an advisory notice indicating that if the applicant does not have a currently active, or currently pending application for a, Registry Agreement with ICANN designating the applicant as the Registry Operator for the gTLD identified by the applied-for mark, a deceptiveness refusal will be issued pursuant to Section 2(a). A currently pending application with ICANN avoids an immediate deceptiveness refusal, but as discussed in greater detail below, the USPTO will not approve the trademark application for publication without proof of the award of the Registry Agreement.
If the applicant fails to respond to the information requirement, the examining attorney should maintain and continue the information requirement and issue a deceptiveness refusal under Section 2(a). If, in response to the information requirement, the applicant indicates: (i) that the applicant has not applied for a Registry Agreement with ICANN designating the applicant as the Registry Operator for the gTLD identified by the applied-for mark; (ii) that the applicant has applied for a Registry Agreement with ICANN designating the applicant as the Registry Operator for the gTLD identified by the applied-for mark, but that the application has not been approved and is no longer pending with ICANN; or (iii) that the applicant’s previous Registry Agreement with ICANN is no longer valid, then the examining attorney should issue a deceptiveness refusal under Section 2(a).
If: (i) the applicant indicates that it has a currently pending application before ICANN for a Registry Agreement designating the applicant as the Registry Operator for the gTLD identified by the applied-for mark; (ii) the applicant has otherwise successfully shown that the mark consisting of the gTLD in the application before the USPTO could function as a mark; and (iii) the application is otherwise in condition for approval for publication, allowance for registration on the Supplemental Register, or final action, then the examining attorney must suspend the application until the resolution of the applicant’s application for a Registry Agreement with ICANN.

Legitimate Service for the Benefit of Others


Please discuss this section of the guide here.
To be considered a service within the parameters of the Trademark Act, an activity must, inter alia, be primarily for the benefit of someone other than the applicant.14 Therefore, the examining attorney must issue an information request with the following inquiries in order to determine if the domain name registration or registry services will be primarily for the benefit of others:


  • Does the applicant intend to use the applied-for mark as a gTLD?

  • Does the applicant intend to operate a registry for the applied-for mark as a new gTLD and sign a Registry Agreement with ICANN for such gTLD?

  • To what entities and industries will the applicant’s domain-name registration or registry services be targeted?

  • Does the applicant intend to register domain names for others using the gTLD identified by the applied-for mark and will there be any restrictions on to whom it will be available?

While operating a gTLD registry that is only available for the applicant’s employees or for the applicant’s marketing initiatives alone generally would not qualify as a service, registration for use by the applicant’s affiliated distributors typically would.


If the applicant fails to indicate for the record that the applicant’s domain-name registration or domain-name registry services are, or will be, primarily for the benefit of others, the examining attorney must refuse registration pursuant to Sections 1, 2, 3, and 45 of the Trademark Act.15



1 Internet Corporation for Assigned Names and Numbers, About gTLDs, http://www.icann.org/en/resources/registries/about (accessed June 3, 2013).

2 TMEP §1215.02(d).

3 Internet Corporation for Assigned Names and Numbers, Reveal Day Information and Links for Journalists, http://www.icann.org/en/news/press/kits/reveal-day-13jun12-en.htm (accessed May 29, 2013).

4 Except as detailed in this Exam Guide, all other USPTO policies regarding registration of marks containing gTLDs remain unchanged. Accordingly, examining attorneys reviewing applications for marks containing gTLDs must continue to issue all other applicable refusals (e.g., likelihood of confusion, mere descriptiveness, etc.).

5 15 U.S.C. §1051.

6 15 U.S.C. §1126(e).

7 15 U.S.C. § 1058.

8 15 U.S.C. §1141(f)(a).

9 15 U.S.C. §1141k.

10 15 U.S.C. §1052(f).

11 37 C.F.R. §2.71(a); TMEP §§1402.06–1402.06(b).

12 15 U.S.C. §1052(a); TMEP §§1203, 1203.02–1203.02(g).

13 37 C.F.R. 2.61(b); TMEP §814.

14 TMEP §1301.01(a)(ii); see In re Reichhold Chems., Inc., 167 USPQ 376, 377 (TTAB 1970).

15 15 U.S.C. §§1051-1053, 1127; TMEP §1301.01(a)(ii).




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