gTLDs: New USPTO Trade Mark Examination Guidelines

Article written by: Penny Catley    |   Tuesday 1st October 2013

The United States Patent and Trade Mark Office (USPTO) has updated its current policy and procedures for examining trade mark applications comprising generic Top-Level Domains (gTLDs). The draft was open to public comment until 8 September 2013.

Last year, the organisation responsible for overseeing the domain name system, Internet Corporation for Assigned Names and Numbers (ICANN), began to allow applications for domain names following the “dot” in a web address. As an example, consider the gTLD .baldwins. As of 30 August 2013, the Initial Evaluation phase has concluded and 1,745 gTLD applications have passed, 32 have entered Extended Evaluation and 121 were withdrawn from the program. 

The following extensions have now been accepted and will begin operating once technical checks have been completed:

.bike                .holdings

.clothing           .lighting

.ventures         .singles

.voyage           .онлайн (.online)  

.camera           .сайт (.site) 

.equipment      .شبكة. (.web/.network) 

.estate             .游戏 (.game(s))

.guru                .企业 (.enterprise/.firm/.company)

Acknowledging that brand owners will wish to begin registering their gTLDs as trade marks, the USPTO has revised its original policy to allow, in some circumstances, the registration of a trade mark consisting of a gTLD for domain-name or registry services. Up until now marks composed solely of a TLD have been considered ineligible for registration on the grounds that they will not be perceived as a mark or ‘source identifier’. For example, .com and .gov are merely abbreviations referring to ‘commercial enterprises’ and ‘government agencies’ respectively. In New Zealand, IPONZ follows a similar examination policy noting that standard address code material such as .co and .com have no distinctive character and are, therefore, prima facie unregistrable.

However, the USPTO now recognises that a gTLD (such as .baldwins) may now be capable of functioning as a trade mark and has set out three requirements that an applicant must meet to avoid a provisional refusal. The full draft guidelines can be viewed at www.uspto.gov.

1.   The applicant must provide the USPTO with evidence that the mark will be perceived as a source identifier.

A way of meeting this requirement would be to file proof of one or more currently active prior US trade mark registrations for the same mark. An applicant, however, must limit the specification in view of goods/services covered by the earlier registration. For example, if the trade mark BALDWINS identified its services as “legal services”, the services for the trade mark “.baldwins” would be identified as “domain-name registration services for websites featuring legal services and information about legal services”.

The lack of a “dot” in the earlier US registration is not determinative, so Baldwins could base an application upon a prior registration for BALDWINS, DOT BALDWINS, or .BALDWINS.

The USPTO will also require a significant amount of relevant additional evidence demonstrating that the gTLD, with or without the “dot”, will immediately identify the source of the registration or registry services. An applicant should be able to provide examples of promotional and advertising materials using the mark as applied for, advertising expenditure and sworn consumer statements recognising the mark as a ‘badge of origin’.

2.   The applicant must enter into a valid ICANN Registry Agreement

A consumer would generally see the proposed gTLD mark as a feature of the applicant’s domain name registration or registry services, and would consider its availability material in the purchase of these services. Therefore, if an applicant has not identified itself as the Registry Operator for the gTLD through a Registry Agreement with ICANN then consumers are at risk of being deceived by use of the gTLD as a trade mark. Accordingly, an applicant must (i) submit evidence that it is party to a valid Registry Agreement with ICANN, designating the applicant as the Registry Operator for the gTLD; and (ii) indicate in the identification of services that the domain registration or domain registry services feature the gTLD shown in the mark.

3.   The applicant must prove that the domain name registration or registry services are a legitimate service for the benefit of others.

Within the scope of the US Trademark Act, a ‘service’ must primarily be for the benefit of someone other than the applicant. Therefore, the examiner of a gTLD trade mark application will issue an information request asking the applicant the following:

  • 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?
     
  • 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 ibendentified by the applied-for mark and will there be any restrictions on to whom it will be available?
     

If all three requirements are met a mark consisting of a gTLD will be eligible for registration as a trade mark in respect of domain-name registration or registry services.

While New Zealand businesses should want to bolster their presence online at the most basic level, namely, through secure domain name ownership and administration, brand owners must also be prepared to adopt a complete IP protection strategy in every market they wish to trade. Our experts at Baldwins will help you navigate this constantly evolving environment.

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