By Brian D. Kaider, Esq.

In March 2014, the U.S. Patent and Trademark Office issued Examination Guide 1-14, “Applications for Marks Comprising gTLDs for Domain-Name Registry Operator and Registrar Services.” The Guide outlines the requirements necessary to obtain registration for a gTLD.

What is a gTLD? The series of letters that come after the “dot” in an internet address are referred to as a “Top Level Domain” or “TLD.” Extensions with only two letters are reserved as country code TLDs or ccTLDs. Those with three or more letters are called “generic” TLDs or gTLDs. Historically, gTLDs were used to signify the class of intended users of the gTLD (“.COM” for commercial purposes, “.EDU” for educational institutions, etc.). However, the Internet Corporation for Assigned Names and Numbers (ICANN) has begun a program to introduce a slew of new gTLDs. Between October 2013 and May 2014, 294 new gTLDs have been delegated, including .LAWYER and .ATTORNEY. As many as 1000 more gTLDs may be released in the next few years. Some of these gTLDs may have significant value as source identifiers.

Prior USPTO policy did not permit registration of gTLDs as trademarks, because they were typically abbreviations of a class of intended users. In August 2013, in light of ICANN’s intention to introduce a wide array of new gTLDs, the USPTO issued a draft Examination Guide amending its policy with regard to gTLDs, allowing registration of some gTLDs that consist of a coined mark. In March 2014, the guidance issued in final form.

Examination Guide 1-14 begins with the premise that a mark consisting solely of a gTLD must initially be refused registration on the basis that it fails to function as a trademark, because consumers are predisposed to view gTLDs as merely a portion of a web address. The applicant may be able to avoid or overcome such a rejection, however, by providing evidence that the mark will be perceived as a source identifier. If the applicant can provide a sufficient showing, it must also satisfy two other requirements: that it has entered into a valid agreement with ICANN designating the applicant as the entity responsible for operation of the registry for the gTLD and that the identified services will be primarily for the benefit of others.

Evidence that the gTLD Will Function as a Source Identifier

The primary evidence the applicant must show is that the applied for mark is the subject of one or more active prior U.S. registrations for goods or services that are related to the identified subject matter of the websites to be registered by the applicant.[1] Further, on the premise that a consumer’s recognition of a gTLD as a source identifier is predicated on the applicant’s prior registration of the same mark, the applicant is required to limit the “field of use” for the identified domain name registry operator and registrar services to fields that are related to the goods or services listed in the submitted prior registration.

Applicants must also provide evidence that consumers are already so familiar with the wording as a mark that they will overcome the predisposition of viewing a gTLD as merely part of an internet address and associate the mark with the registry operator as a source of the associated goods or services. Such evidence may include advertising samples, advertising budgets associated with the mark, and sworn consumer statements of recognition of the mark.

Registry Agreement / ICANN Contract

The registration application must include a verified statement that the applicant has a current or pending[2] Registry Agreement with ICANN designating the applicant as the registry operator for the gTLD. Further, the identification of services must indicate that the registry operator and registrar services feature the gTLD shown in the mark.

Legitimate Service for the Benefit of Others

Because trademark registration for a gTLD will only be issued to those operating registry or registrar services for the gTLD, the applicant must show that the services will be primarily for the benefit of others.[3] The examining attorney will issue an information request to determine whether the applicant intends to operate a registry for the applied-for mark as a gTLD, to what entities and industries the registry operator and registrar services will be targeted, and whether the applicant will register domain names for others and whether there will be any restrictions on to whom it will be available. Operating a gTLD registry only for the applicant’s own employees or marketing initiatives would not qualify as a service under the Trademark Act. Registration for use by the applicant’s affiliated distributors, however, would qualify.

Discussion

Becoming a registry operator is an arduous undertaking with many technical and logistical challenges. It is very unlikely that the average trademark owner will be willing or able to expend the time and money necessary to get a valid ICANN Registry Agreement. Consequently, it is unlikely that the average trademark owner will be able to get trademark registration of gTLDs consisting of their marks. Rather, this guidance is likely only to apply to the largest trademark owners. Indeed, getting a gTLD delegated by ICANN is an expensive proposition in its own right. The application fee alone is $185,000.

The real question, as it relates to the new trademark Examination Guide, is how the USPTO will handle requests to register a gTLD for a trademark that is owned by different companies in different fields of use. For some marks, this will not be an issue. For example, there are 98 currently active marks utilizing the name “Pepsi.” All 98 are owned by Pepsico, Inc. So, if Pepsico enters into a valid Registry Agreement with ICANN for the gTLD “.PEPSI” they would likely have little difficulty securing trademark protection for that gTLD.

Conversely, there are 45 current live marks for the words “True Blue” and “TrueBlue,” owned by different companies with fields of use ranging from eyewear to pet food to banking services to frequent flyer programs. Some of these companies probably would not have the resources to apply to ICANN to delegate the gTLD “.TRUEBLUE” and to then enter into a valid Registry Agreement. But, some might. JetBlue Airways Corporation, for example, owns trademark #76,378,283 for the word mark “TRUEBLUE.” So, if JetBlue gets ICANN to delegate the gTLD “.TRUEBLUE” and enters into a Registry Agreement, they can apply for trademark protection for the gTLD. How will the USPTO handle that application in light of the 44 other owners of valid True Blue trademarks? Will the existence of so many other valid trademark owners preclude a finding that the gTLD can operate as a source identifier for Jet Blue? If not, will the other 44 be foreclosed from the gTLD that also consists of their mark?

As exciting as this new expansion of the internet is, it is also a time of uncertainty and concern for trademark owners. It is essential that trademark attorneys get up to speed on the issues quickly to help their clients navigate these uncharted waters.

 

 

For a discussion of protection mechanisms for trademarked terms within the new gTLDs, see http://www.kaiderlaw.com/blog/new-internet-extensions-how-to-protect-your-trademark (bit.ly/1hbyjjs).

 

Brian D. Kaider practices litigation and intellectual property law in

The Law Offices of Brian D. Kaider, LLC

Website: www.kaiderlaw.com

LinkedIn: www.linkedin.com/pub/brian-d-kaider/3/913/571/

Twitter: @bkaider

 

Trademarks and trade names used in this article are for illustrative purposes only and are not intended to convey legal advice or likelihood of success in seeking trademark protection.

[1] “[t]he lack of a ‘.’ or ‘dot’ in the submitted prior U.S. registration is not determinative as to whether or not the mark in the prior U.S. registration is the same as the mark in the application.” Examination Guide 1-14, page 3.

[2] If applicant has a pending application before ICANN for a Registry Agreement and has otherwise demonstrated to the USPTO that the gTLD can function as a mark, the examining attorney may suspend the trademark registration application until resolution of the ICANN application.

[3] TMEP §1301.01(a)(ii)