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New Rules For Examining Trademark Applications For Marks Incorporating Generic Top-Level Domains

In June 2011, ICANN (Internet Corporation for Assigned Names and Numbers) approved a plan to expand the number of new gTLDs (generic top-level domains) in the domain name system. A generic top-level domain is one of the categories of top-level domains maintained by the Internet Assigned Numbers Authority for use in the domain name system. Before the expansion, the core group of the generic top-level domains consisted of com, info, net, and org. The USPTO’s (The United States Patent & Trademark Office) policy had been that if a mark was comprised solely of a TLD for domain name registry services, the USPTO would refuse it on the basis that it could not function as a source indicator.

In June 2008, ICANN began considering a plan to expand the number of gTLDs in the domain name system.  In the next several months, there is an impending launch of 1,400 new gTLDs. Large companies such as McDonald’s Corporation and Nike have applied to operate new gTLDs based on their brand names (.MCDONALDS and .NIKE). These companies will have the responsibility of operating an online registry similar to .com or .org. Once the registries are open then third parties can register domain names in the new gTLD. Based on this expansion of the domain name system, the USPTO has decided to update its policy with respect to registering gTLDs as trademarks. With this new landscape in mind, possibly a new gTLD could serve a source identifying function. To properly distinguish between those gTLDs that can serve as source identifiers and those that can not, the USPTO will utilize the following evaluation system for review of trademark applications that are comprised of gTLDs and that file for protection for domain name registration or registry services.

Under those circumstances, the trademark applicant must be able to satisfy all three of the following criteria:

1) The applicant must prove that the proposed trademark will be perceived as a source identifier;

2) The applicant must demonstrate that it entered into a valid agreement with ICANN (a “Registry Agreement”); and

3) Show that the identified services will benefit others.

In addition to meeting the primary criteria set forth above, the applicant will also have to satisfy the existing requirment for trademark registration, there can not be a likelihood of confusion with a prior trademark.  It may prove challenging to satisfy all of the criteria.  The applicant will have to show it owns one or more U.S. registrations for the mark in question. The identification of services in the new trademark application will have to match the existing one.  This means if the current application is for apparel, then the new trademark application must be for domain name registration services for websites featuring apparel.  Moreover, the applicant must demonstrate through substantial evidence that the mark will function as a source indicator. Lastly, the applicant will have to show that the domain name registration services are for the primary benefit of third parties, and not the applicant.

The application period opened in January 2012 and by June 2012 ICANN had received 1,930 new top-level domain applications. A total of 1,179 were uncontested applications and 751 were contested.  The majority of applications 1,144 were for standard gTLD applications, such as .movie or .car. Another 652 were for individual brands such as .NIKE or .MCDONALDS, while 68 were community groups, and 66 were for geographic designations.  ICANN has put in place a number of mechanisms which will assist brand owners. For example, the Trademark Clearinghouse will be the center of the gTLD process.  It will be a central repository for trademark information.  The clearinghouse will be the first of its kind in the domain name space. It will verify trademark data from multiple global regions and maintain a database with the verified trademark records.  The verified data will be used to support trademark claims and other services required in all new gTLDs.

There will be a lot of questions that need answers as new domains start to roll out into the marketplace. If your organization has any questions, or anticipates potential domain name abuse with regards to your brand, please feel free to contact our firm with any inquiries or concerns. If you find yourself involved in a domain name dispute, we can assist you. Brand owners will need to be especially vigilant in this new environment.