New York Trademark Attorney Blog
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.