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Trademarks for TLDs

Mary Iqbal

The United States Patent and Trademark Office (USPTO) has recently circulated proposed examination guidelines to allow the USPTO to begin providing Trademark Protection for Top Level Domains (TLDs). This is an important new development. TLDs today are currently ineligible for Trademark protection on the basis that they do not constitute a source-identifying mark.

The USPTO is currently in the process of rectifying this situation by extending Trademark protection to Registry Service providers and has released its proposed examination procedures for that purpose. However, there are some very concerning elements to their proposed examination guidelines. Rather than simply applying standard examination procedures to the new Business Class, the USPTO is proposing extraordinary new rules for Trademarks for TLDs. Most concerning of all, the USPTO is proposing that before a Trademark for a Registry Services provider can be granted, that Registry Services provider must sign a contract with ICANN to provide Registry Services.

The USPTO's proposal to involve a separate corporation in the U.S. Trademark evaluation process is concerning, because at a basic level, the USPTO is supposed to be an impartial and independent arbiter of United States Trademark law. By requiring an ICANN contract before a Trademark can be issued, the USPTO is, in effect, putting a California corporation in charge of determining who is eligible for U.S. Trademarks in this industry. Moreover, ICANN, in the event that two applicants are vying for the same TLD mark, has announced their intention of accepting bids from the competitors, with the brand being given to the highest bidder. Therefore, U.S. Trademarks for one of the most cutting edge industries in the world may soon be sold to the highest bidder.

We assert that the USPTO must provide Trademark protection for TLDs, while ICANN should continue to approve new TLD operators. There is clear precedent for this division of responsibilities. The Federal Communications Commission (FCC) grants approval for telecommunications providers to operate on specific frequencies, however, the USPTO grants Trademarks for those operators. In the same way, we assert that ICANN should retain authority to approve new Top Level Domain operators; however, the USPTO must retain authority to administer Trademark law independent of ICANN.

Intellectual Property protection, like private property, is one of America's most precious institutions. Particularly in the Information Age, the greatest care must be taken to promote the progress of science and the useful arts by providing an orderly and fair process for the allocation of Intellectual Property rights in the form of Trademarks. Surely, a bidding process is not what the founding fathers had in mind.

Rather, United States Trademarks should be independent of ICANN approval. Since Trademarks must be used in business within a certain amount of time after the Trademark is granted, anyone who does not have ICANN approval to operate a TLD or who does not operate a TLD on a competing public Internet would lose their Trademark. However, the important thing is that if Trademarks are independent of ICANN's approval, then companies could apply for a trademark for a TLD, and then apply for a TLD with ICANN, thus ensuring that companies do not face competition during the ICANN application process, thus protecting investment. "Through the registration of trademarks, the agency assists businesses in protecting their investments, promoting goods and services, and safeguarding consumers against confusion and deception in the marketplace." (source) Thus, the proper and equal application of Trademark law is in line with the USPTO's stated goals and also preserves the integrity of the USPTO and of ICANN.

It is easy to see why ICANN might not be in favor of standard examination guidelines for Trademarks for TLDs. There were 1,930 applications for new TLDs filed in ICANN's recent application round. Of these, 751 applications were placed in contention sets (which means that the TLD strings were too similar to one another or exact matches of each other to be allowed to coexist.) For example, there were 13 applications filed by different companies all seeking to create the .app Top Level Domain. Due to the high application fee for each TLD application, ICANN made over $215 hundred million dollars in one quarter on duplicate TLD applications alone. This revenue would not have existed if TLD applicants were able to file a request for a $275 trademark before they filed an application for a TLD.

The USPTO's proposed examination guidelines for TLDs are available here. The USPTO is soliciting public comment on these guidelines until September 8, 2013. Please visit this page to learn more about how to share your feedback with the USPTO on this important topic.

By Mary Iqbal, Founder of DotAnything.co
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Trademark Frontrunning is dead - gTLD Trademarks in Good Faith Dirk Krischenowski  –  Sep 02, 2013 12:12 AM PST

We saw several articles on the topic of "trademark frontrunning" in new gTLDs during the couple of years. It was unclear what they were targeting, but it has not really been a topic at ICANN. The only action ICANN enforced was to forbid trademarks starting or including "." (dot) to become registered with the TMCH.

But things recently changed not only with the latest USPTO proposal:

1. WIPO decisions in Legal Rights Objections (LROs) determined that new gTLD's trademarks and “.” (dot) trademarks, even for strings that had been considered generic, are valid. For instance, in the decision on .GMBH (Case No. LR02013-0052) the panel determined: “The Panel determines that Objector acquired and has used its mark in good faith.”

2. In the decision Image Online Design, Inc. vs. ICANN it was stated that “The USPTO's prior stance on the function of TLDs as generally not being source indicating is a relic of an essentially exclusive ".com" era, which is rapidly coming to an end.”
Source 1: http://www.icann.org/en/news/litigation/iod-v-icann/complaint-17oct12-en.pdf
Source 2: http://www.icann.org/en/news/litigation/iod-v-icann/order-granting-motion-dismiss-07feb13-en.pdf

Interesting quote.... John Berryhill  –  Sep 03, 2013 6:39 AM PST

" In the decision Image Online Design, Inc. vs. ICANN it was stated that “The USPTO's prior stance on the function of TLDs as generally not being source indicating is a relic of an essentially exclusive ".com" era, which is rapidly coming to an end.” "

Yes, "it was stated" by the losing side, in the complaint.

There is a widespread misconception that the USPTO is in the business of "granting trademarks" as if it was up to the USPTO to determine what is, or what is not, a trademark. That is not what the USPTO does.  The USPTO is in the business of registering trademarks - i.e. granting federal registration status to an existing mark under ordinary principles of common law.  The USPTO does not determine what things are, or are not, trade or service marks.  They merely determine which trade or service marks are federally registrable.  A trade or service mark remains any word, symbol or device used on or in connection with goods or services so as to provide a distinctive indicator of the source or origin thereof.

Now, "Calvin Klein" is not in the business of printing up labels for people to sew into their own clothing.  They are in the business of making clothing and applying a label saying "Calvin Klein" to indicate who made the clothing.  Likewise "Toyota" manufactures automobiles, and applies the mark "Toyota" to them.  They do not manufacture "Toyota" logos for application to your Honda, Kia, or Ford.

A gTLD registry, unlike a chartered TLD registry that might be run on some sort of members-only basis or by a brand owner for the purpose of promoting its own goods and services under the brand, IS precisely in the business of registering domain names to all comers so that those others may use the gTLD string for whatever goods and services their heart desires.  Those goods and services, offered by the registrants, do not originate with the gTLD registry, and thus the gTLD string is not an indicator that such goods or services do originate with the gTLD registry.

The obsession among some over what the USPTO will or will not register indicates a continued misunderstanding of both what is a trade or service mark, and what function the USPTO provides.  By way of analogy, my local animal control department requires me to license my dog.  Now, they might refuse to license my dog if, for example, my dog doesn't have its current vaccinations or if my dog is a breed which is not legal in my area.  But whether or not my dog IS a dog is not up to the local animal control department.  They are not in the business of determining whether my dog is a dog.  That is a fact which is wholly independent of their function of determining which dogs and under what conditions they will register my dog as a licensed dog.

The rule makes sense to me... Daniel R. Tobias  –  Sep 02, 2013 9:54 AM PST

It's designed to stop the abusive process of reverse-hijacking domains that haven't even been issued yet by speculators registering trademarks and threatening to sue everybody else trying to get that name as a domain, thus making an end-run around the ICANN process.

Still Stunningly Misinformed John Berryhill  –  Sep 02, 2013 10:28 AM PST

"Intellectual Property protection, like private property, is one of America's most precious institutions. Particularly in the Information Age, the greatest care must be taken to promote the progress of science and the useful arts by providing an orderly and fair process for the allocation of Intellectual Property rights in the form of Trademarks. Surely, a bidding process is not what the founding fathers had in mind."

The "founding fathers" had no trademark registration system in mind whatsoever.  The United States did not have a trademark registration system of ANY kind until 1870.  The "founding fathers" were, at that point, long dead.

Also, it is outstanding that you still continue to quote the patent and copyright provision of the Constitution, which provides Congress with the power, but not an obligation, to institute patent and copyright laws.  Trademark law does NOT arise under that provision of the Constitution.  In fact, that 1870 trademark registration system - the first one the US had - was indeed premised on the patent and copyright clause, and was STRUCK DOWN in 1879 by the Supreme Court as not having been authorized pursuant to that provision of the Constitution. 

The second trademark registration system, passed in 1881, was premised on the Commerce Clause, as is the current Lanham Act dating to 1946.

The amazing thing is that this has been explained to you before, but you seem to be resistant to understanding that for the first 100 years of its existence, there was no trademark registration system in the United States, and the current one owes nothing to any "founding fathers".

Irrelevant and Misleading Mary Iqbal  –  Sep 05, 2013 4:49 PM PST

Your comment is both irrelevant and misleading.  The Founding Fathers did not specify the exact administrative body that would administer Intellectual Property, but they did give the power to congress to administer Intellectual Property rights.  The basis of that power is debatable - there are two different schools of thought on whether the Commerce clause of the Intellectual Property clause grants congress the power to create the USPTO.  However, the USPTO's own website quotes the Intellectual Property clause.  The following is taken from the USPTO's website at http://www.uspto.gov/about/bios/cohn_bio.jsp "Since 1790, the basic role of the United States intellectual property system has remained the same: to promote the progress of science and the useful arts by securing for limited times to inventors the exclusive right to their respective discoveries (Article I, Section 8 of the United States Constitution)."

However, as I said, all that is really irrelevant.  We are not debating whether the USPTO should exist or not. We are debating the policies of the USPTO.  My point is that the USPTO should not create significantly different processes to administer trademark law from one industry to another.  We cannot have one set of rules for one business class and a completely different set of rules for another business class.

Mary = Asif = tried to front Andrew Allemann  –  Sep 03, 2013 6:53 AM PST

Mary = Asif = tried to front run .secure and .bank, said it wasn't fair that without the trademark they couldn't block other companies from applying for these.

http://forum.icann.org/lists/newgtlds-defensive-applications/msg00012.html

"Furthermore, as a result of the lack of trademark protection for Top Level Domains, businesses competing for strings like .SAS may be forced to contend
against each other financially, to bid against each other, for the right to
have protection for the term .SAS for Registry Services.  This means that
applicants with access to greater funding resources have an advantage over
those with less access to funding.

"This is exactly the type of situation that trademark law was designed to
prevent."

Wow.... John Berryhill  –  Sep 03, 2013 8:38 AM PST

Trademark law is most decidedly NOT designed to favor the less well funded over the more well funded.  Among the measures of trademark strength are such things as sales revenue, market recognition, advertising budget, and other parameters which are directly related to wealth. "Calvin Klein" underwear is a stronger mark than "Calvin College" theological seminary PRECISELY because the underwear makes more money than God.

A bit off topic Mary Iqbal  –  Sep 05, 2013 5:35 PM PST

Actually I think that I have been proven right by the events that have been unfolding.  We now see before us the inevitable result of an industry without equal protection under the law.  Instead of an orderly process to claim rights to a mark, companies are now forced to bid for them.  Mr. Berryhill misses the point - we are not talking about the strength of existing trademarks at all, so his point is a bit off topic.

So your solution is that instead of Andrew Allemann  –  Sep 05, 2013 5:57 PM PST

So your solution is that instead of an auction whomever thinks to file a trademark application first should get the domain name?

Yes Mary Iqbal  –  Sep 05, 2013 6:10 PM PST

Yes, that is correct.  Trademarks are the standard vehicle for Intellectual Property protection and few people would argue against their utility.  However, I would add to your comment that getting a trademark would - of course - not guarantee ICANN approval to operate a TLD.  Just as someone with a Trademark to operate a radio station also needs FCC approval to operate that radio station, so someone with a hypothetical Trademark for a TLD would still need ICANN approval to actually operate that TLD.  ICANN would still have the final word.

You still don't give any logical reason Daniel R. Tobias  –  Sep 06, 2013 6:31 PM PST

You still don't give any logical reason why anybody who isn't yet actually operating a particular domain ought to be able to get a trademark on it. Trademarks are to protect brands that already exist for actual commerce, not currently-generic words you think you might be able to make into a brand in the future.

But perhaps you would rather it be like a game of Monopoly, where whoever lands on a space first can collect rent from everybody who comes there later.

'Intent to Use' Mary Iqbal  –  Sep 07, 2013 6:00 PM PST

In the United States (as in most countries) a Trademark application can be filed either as "currently in use" or , if you have not yet used the mark, but intend to use it in the future, you may file a Trademark in the United States under the "intent to use" basis.  United States Trademark law requires that trademark applicants show proof of use within six months after a trademark is issued, or the trademark is revoked. This means that only applicants who actually use a trademark for Registry Services will be able to maintain the trademark. I am suggesting that the same rules should apply to a hypothetical business class for TLDs that apply to every other business class in the United States.

Consumer Protection Barry Shein  –  Sep 08, 2013 8:16 AM PST

The underlying purpose of a trademark is consumer protection — so a consumer purchasing a product such as a bottle of Coca-Cola can know with some confidence it is made by (or under explicit license from) The Coca-Cola Corporation.

It is not, as the article seems to suggest, a Land Grant Office in the intellectual property space. Any rights in a mark follow from that desire to protect consumers and trademark holders (e.g., dilution) from unscrupulous use of their mark.

Filing an intent to use merely puts others who might be interested in the mark on notice that someone else is, to be redundant, intent on establishing that mark in that business class. Many such ventures fail to materialize — filing a trademark application is cheap and worth every penny it costs.

The extent of any protection is grounded in having established a product or service under that mark not filing an application and paying the small fee.

Further, the USPTO does absolutely nothing to protect a mark. It's merely a piece of evidence which can be used in a court or business discussion (among reasonably honorable people) as to who did what and when where a dispute or misunderstanding arises.

I realize, and have personally experienced many times, that people conceive of the USPTO as some sort of intellectual "land grant" office. It's errant nonsense much like when people believe they can willfully run down jaywalkers with impunity.

If the USPTO's role was as described then there would be vast businesses whose primary activity would be registering clever business names and offering them for sale.

And that's precisely what we've created out of the DNS.

There might be a lesson to ponder there.

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