USPTO Consults On Whether gTLDs Can Be Trademarks

The United States Patent and Trademark Office is looking into whether new gTLDs should be allowed trademarks.

The USPTO has updated its policy as to whether gTLDS should be considered trademarks. The USPTO notes that a trademark “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 [various sections of the] Trademark Act.”

But there are exceptions where “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.”

For a gTLD to be registered as a trademark it must be the same as the applied for gTLD. The USPTO paper goes on to say “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.'”

The USPTO also sees it as essential the trademark applicant to also have also entered into a registry agreement with ICANN for the applied for gTLD lest “consumers may be deceived by use of a particular gTLD as a mark.”

And trademark applications will be refused if the applicant’s gTLD or “registry services are, or will be, primarily for the benefit of others.”

For more information on the consultation download the “Applications for Marks Comprised of gTLDs for Domain Name Registration or Registry Services: Examination Guide” here that contains hyperlinks in each section that directs to the website where comments can be posted about the guide.