TRADEMARK REGISTRATION FOR YOUR NEW gTLD? MAYBE…

FairWinds Partners —  August 14, 2013

The United States Patent and Trademark Office (USPTO.gov) has proposed that certain new dot-brand gTLDs could be eligible for registration as trademarks - if the gTLDs meet certain criteria.  These criteria include owning a prior registration for the exact mark of the TLD, proving that the mark is famous, and showing that “legitimate services for the benefit of others” are provided under the gTLD.  As expected, dot-generic gTLDs are excluded since they don’t function as trademarks.

While this may seem novel, some of this is really just old wine in new bottles. It has always been the rule that use of a brand solely for a company’s own marketing initiatives does not function as a trademark and is not eligible for registration. Why? Because marketing and promotion are technically not “services” provided to customers. However, in the context of new gTLDs, this may mean that a closed registry – one in which only the brand owner may register domains – might be excluded under the USPTO’s rules if its only purpose is to promote the company’s products. On the other hand, if the gTLD is opened up for use by the company’s distributors, partners, customers, etc., or if the company uses the gTLD to actually make online sales or provide support services, then its use may be “for the benefit of others” and registration will be considered.

The next question is why the owner of a prior trademark registration for the identical mark would care about getting a new registration – which only adds the dot (the one that appears before the gTLD). This may be a tougher question to answer and will depend on whether the brand owner wishes to protect its mark for some new service which is being offered under the gTLD (ex. domain-name registration or registry services, vanity email addresses, etc.).  However, if the goods or services provided under the new gTLD are exactly the same as those covered by prior trademark registrations, a brand owner could choose to forego the new gTLD mark and save some money.

Since the USPTO proposal is currently open for public comment, the final version may change from what’s been proposed. This should be an interesting process to watch even though, in the end, it will only affect a very small number of trademark applicants.