Firms File Trademarks for Fresh Top Level Domain Names

Filings unlikely to give a leg up in application process.

Firms are filing with the United States Patent and Trademark Office for service marks related to fresh TLDs. For example, Top Level Domain Holdings, Ltd (AIM: TLDH) has filed trademarks for .movie, .kids, .books, .buy, .baby, .poker, .golf, and .casino. (Top Level Domain Holdings is an investor in fresh TLD consulting firm Mind + Machines and dotNYC, LLC.)

Other examples include .eco, a trademark filed by Colored Planet of Connecticut that appears close to being approved. A Canadian firm has also filed for the .eco mark. Neither of the applicants appear to be the group endorsed by Al Gore.

Given that applications aren’t being accepted for fresh top level domain names yet, you may wonder how anyone could file a trademark for them. Firms have frequently tried such filings to stake a claim to a TLD ahead of it was launched. Firms have filed for everything from .radio to .god to .gay. Many of these were filed in the late 90s and almost all were rejected.

That few of these filings have been approved ought to not come as a surprise, states attorney John Berryhill. He points to section 1215.02(d) of Trademark Manual of Examining Procedure, which states that top level domain names can’t be trademarked for registry services:

If a mark is composed solely of a TLD for “domain name registry services” (e.g., the services of registering .com domain names), registration ought to be refused under Trademark Act 1, 2, 3 and 45, 15 U.S.C. 1051, 1052, 1053 and 1127, on the ground that the TLD would not be perceived as a mark. The examining attorney ought to include evidence from the LEXIS database, the Internet, or other sources to show that the proposed mark is right now used as a TLD or is under consideration as a fresh TLD.

This may explain why some trademark applicants, counting one applicant for .eco, use different classes of service such as “Providing specific information as requested by clients via the Internet” to try to slip by the examiner.

An existing registry, mTLD, attempted to trademark .mobi a couple years ago. The organization faced push back from the internet community, especially since mTLD is merely a steward for the TLD and doesn’t actually own it. This issue was also addressed in 2000 when Image Online Design, Inc. claimed it ought to be the only group to be awarded .web since of trademark rights. It failed.

So why would a firm try to trademark a TLD it doesn’t (yet) operate? There are a few potential reasons. It may use the trademark in an attempt to get a leg up with ICANN, either when applying for a TLD or if it is ever assigned to a different registry. It may also use it to lodge a claim at another firm that applies for a TLD.

Or it could be for defensive purposes, as TLDH Chief Operating Officer Antony Van Couvering claims.

“TLDH is applying for trademarks for “dot name” in areas we, or our clients, might want to apply for a top-level domain,” wrote Van Couvering in an e-mail to Reglike. “We don’t actually believe that they are necessary or even helpful, but we want to avoid having to deal with someone else’s trademark-based claim in the event that we decide to apply for one of these.”

John Berryhill has written regarding a similar situation for second level domains, when firms tried to trademark single letter .com domain names. In an article published on his web site, Berryhill predicted that this sort of “pre-emptive trademarking” would occur for fresh TLDs:

This type of gamesmanship ought to be penalized during the allocation of single character domain names. Rewarding this behavior will have consequences that also reach into the assignment of fresh top-level domains, as the identical sort of game is being played in that arena as well, which is a story for another day.

Perhaps that day has come.