USPTO Issues Trademark Examination Guide for gTLD Marks for Domain Name Registry Operators and Registrars | Practical Law

USPTO Issues Trademark Examination Guide for gTLD Marks for Domain Name Registry Operators and Registrars | Practical Law

The US Patent and Trademark Office (USPTO) has released Examination Guide 1-14 updating its policy and procedure for handling applications for marks comprising a generic top-level domain name (gTLD) and setting out circumstances for registrability of a mark consisting of a gTLD for domain-name registry operator and registrar services.

USPTO Issues Trademark Examination Guide for gTLD Marks for Domain Name Registry Operators and Registrars

by Practical Law Intellectual Property & Technology
Published on 24 Mar 2014 • USA (National/Federal)
The US Patent and Trademark Office (USPTO) has released Examination Guide 1-14 updating its policy and procedure for handling applications for marks comprising a generic top-level domain name (gTLD) and setting out circumstances for registrability of a mark consisting of a gTLD for domain-name registry operator and registrar services.
The USPTO has released Examination Guide 1-14, Applications for Marks Comprising gTLDs for Domain-Name Registry Operator and Registrar Services, which:
  • Updates USPTO policy and procedure for handling applications for marks comprising a generic top-level domain name (gTLD).
  • Sets out circumstances for the registrability for a mark consisting of a gTLD for domain-name registry operator and registrar services.
USPTO policy provided in part that a mark comprised solely of a TLD for domain name registry services generally must be refused under Sections 1, 2, 3 and 45 of the Lanham Act (15 U.S.C. §§ 1051, 1052, 1053 and 1127) on grounds that it would not be perceived as a mark. It relied on the premise that gTLDs typically were merely abbreviations of the class of intended users of the gTLD (for example, ".com" for commercial entities and ".gov" for government agencies).
However, the USPTO acknowledges that under the Internet Corporation for Assigned Names and Numbers (ICANN)'s new gTLD program, some of the new gTLDs under consideration may have significance as source identifiers. Therefore, the USPTO is amending its gTLD policy to allow for registration of a mark consisting of a gTLD for domain-name registry operator and registrar services under some circumstances. Under the USPTO's updated policy, an examiner must still refuse registration of these marks on the grounds that the gTLD would not be perceived as a mark. However, the applicant may in some circumstances avoid or overcome the refusal by:
  • Providing evidence that the applied-for mark will be perceived as a source identifier.
  • Showing that it has entered into a currently valid agreement with ICANN designating the applicant as the entity responsible for operation of the registry for the gTLD identified by the mark.
  • Showing that the identified services will be primarily for others' benefit.
The guide is available on the USPTO website.