Trademarks for top level domain names — USPTO considers
In the future, top level domains could be trademarked in the U.S. under limited circumstances.
The U.S. Patent and Trademark Office is seeking feedback on a plan to allow firms to trademark top level domains – albeit under limited circumstances.
The plan would not allow firms to get trademarks on top level domain names they don’t have under contract with ICANN, nor would it allow them to trademark most generic TLDs.
Still, it would be a shift from the current rules that disallow trademarks on TLDs. The existing rules are based on the premise that gTLDs typically are merely abbreviations of the class of intended users of the TLD. Users views them as just part of the web address
That could possibly change with the introduction of fresh TLDs:
To the extent that some of the fresh gTLDs under consideration are comprised of existing registered trademarks or service marks that are by now strong source identifiers in other fields of use, some of the premises underlying existing USPTO policy regarding the registration of gTLDs may no longer hold true for such gTLDs (e.g., a gTLD consisting of a coined mark is not an abbreviation of an entity type or class of intended user of domain space). Where the wording following the “.” or “dot” is by now used as a trademark or service mark, the appearance of such marks as a gTLD may not negate the consumer perception of them as source indicators. Accordingly, the USPTO is amending its gTLD policy to allow, in some circumstances, for the registration of a mark consisting of a gTLD for domain-name registration or registry services.
This doesn’t mean you can trademark .music or .web. It does mean that if you by now have an existing trademark for the term that makes up a TLD, and you have a contract with ICANN for the particular TLD, then you can potentially trademark the TLD as it relates to the goods and services related to your existing trademark:
For example, if the applicant submits prior registrations identifying its goods as “automobiles” and its services as “automobile dealerships,” the services in the application may be identified as “domain-name registration services for websites featuring automobiles and information regarding automobiles.” Still, the applicant may not identify its services as either “domain-name registration services for websites featuring information regarding restaurants” or merely as “domain name registration services.”
There’s another catch. In order to be considered a service within the parameters of the Trademark Act, an activity must be primarily for the benefit of someone other than the applicant.
If Ford only wishes to create sites like buy.ford for marketing purposes, it can’t trademark .ford. If it allows its dealers to create .ford web addresses, then it might qualify.
Details and commenting regarding the proposal is available here.
(Hat tip @AmyEBivins)
