The Internet Corporation for Assigned Names and Numbers (ICANN) is currently reviewing applications for thousands of new generic Top-Level Domains (gTLDs). In response, the U.S. Patent and Trademark Office (USPTO) recently published an updated draft examination guide outlining the agency’s policy and procedure for applications for marks comprised of a gTLDs.
The USPTO has traditionally held that registrations for marks composed solely of a gTLD for domain-name registration or registry services are not eligible for registration because the gTLD would not be perceived as a mark. The rationale was 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).
However, the new USPTO trademark policy acknowledges 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. Accordingly, it outlines the circumstances under which a mark consisting of a gTLD for domain name registration or registry services may pass muster.
Under the updated examination guide, a mark composed solely of a gTLD for domain-name registration or registry services must still be initially be refused under Trademark Act on the ground that the gTLD would not be perceived as a mark. However, applicants can avoid or overcome the refusal by showing that:
- The Applied-For Mark Will Be Perceived as a Source Identifier: 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.
- The Applicant Has a Registry Agreement/ICANN Contract: The applicant must offer evidence that it has entered into a currently valid agreement with ICANN designating the applicant as the entity responsible for operation of the registry for the gTLD identified by the mark.
- The Identified Services Will Primarily Benefit Others: The applicant must offer evidence that the applicant’s domain-name registration or domain-name registry services are, or will be, primarily for the benefit of others, According to the guide, 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, but registration for use by the applicant’s affiliated distributors typically would.