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The Case for Trademark Protection for Top Level Domains

Mary Iqbal

The United States Patent and Trademark Office currently does not provide Trademark protection services for the Top Level Domain industry, an industry which generates almost $1 Billion in revenues annually in the United States (Verisign 2011 Annual Report). The Top Level Domain industry is the only legal business class in the United States that is denied constitutionally guaranteed intellectual property protections. (The United States Patent and Trademark Office was founded by an act of Congress on the basis of Article I. Section 8 of the U. S. Constitution which declares that "The Congress shall have power . . . To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries".)

The way that Trademark law works is that a mark must be Trademarked in a particular industry. For example, a mark that has been Trademarked in the beverages industry does not offer its owner protection in the shipping industry. A mark that is registered in the consumer products industry would not protect its owner in the machining business. In the history of Trademark law, whenever a new type of business was discovered, a new business class has been added to enable businesses to obtain Trademark services within that business class. However, the United States Patent and Trademark Office, rather than recognizing the Registry Services industry as a new type of service, has instead adopted a policy against providing Trademarks for new Top Level Domains.

The lack of Trademark Protection for the Top Level Domain industry has greatly increased the amount of uncertainty associated with the ICANN Application Process for new Top Level Domains. For example, Scandinavian Airlines System Group recently announced their intention of applying to create the .SAS Top Level Domain. However, there are several different companies who have Trademarked the string "SAS" in different business classes. For example, both Scandinavian Airlines and software giant SAS Institute have registered Trademarks for the term "SAS". Since Trademark protection does not exist for the Top Level Domain industry, neither Scandinavian Airlines nor SAS Institute can say that either company has more of a right to the .SAS Top Level Domain than the other. Thus, either company can prevent the other from getting the .SAS Top Level Domain using the legal rights objection process outlined in the Applicant Guidebook. Therefore, there is a high amount of risk for Scandinavian Airlines in applying for the .SAS Top Level Domain, since any company in any business class that uses the term "SAS" could object to the Scandinavian Airlines application for a Top Level Domain. Thus, in order to get the .SAS Top Level Domain, Scandinavian Airlines might have to strike a deal with companies and organizations in any number of industries who may be able to claim legal rights to the term .SAS in some one industry or another.

However, if the USPTO offered Trademark protection for Top Level Domains, the entire process would be simplified. The first company to step forward and follow the proper legal procedures to claim .SAS for the Top Level Domain industry would then be the legal rights holder.

Trademark protection for Top Level Domains would therefore greatly reduce the risk associated with the Top Level Domain application process for companies who may face competition from different industries for their Trademarked term. That is, indeed, the purpose of Trademark law: to reduce risk and protect investment. Without Trademark protection, applicants face the prospect of having to either bid for a Top Level Domain or pay off potential competitors.

As an additional fact to consider, the Trademark application process in the United States includes a time period where anyone may object to an applied for Trademark. THIS is the appropriate forum in which to dispute Trademark rights. It is better to dispute Trademark rights after having paid a couple hundred bucks to apply for a Trademark, than to have to dispute legal rights after having paid an $185,000 application fee.

The ICANN Application process provides a legal objection process for anyone who has a Trademark in any industry. This method is a totally different method of Trademark protection than is used by the rest of the world. As previously mentioned, Trademark law generally protects Trademark owners in specific business classes. However, what ICANN is proposing is that if a company operates under a specific Trademark for, say, the machining business, no one else can have a Top Level Domain that "infringes" upon that company's Trademark. While it is laudable that ICANN has attempted to make up for the fact that Top Level Domains may not currently be Trademarked by guaranteeing protection for all Trademarks in all industries, this is an unsustainable approach, since by what legal right can ICANN decide whether Scandinavian Airlines or SAS Institute have the rights to the .SAS Top Level Domain? Can a small time operator with a Trademark for a word in a totally unrelated business class really say that no one else should use that term for a Top Level Domain? This would be analogous to SAS Institute demanding that Scandinavian airlines stop using the word "SAS". That is not how Trademark law works.

Trademark registration for Top Level Domains has been refused by the United States Patent and Trademark Office on the grounds that marks for Top Level Domains do not function as a service mark to identify and distinguish applicant's services from those of others and to indicate the source of applicant's services. This statement reflects a misunderstanding of the function of a Top Level Domain.

When a user visits a domain within the .INFO Top Level Domain, it is Afilias, Inc., whose Domain Name Servers ensure that traffic is directed to the correct location for the appropriate .INFO domain. When a user visits a domain within the .COM Top Level Domain, it is the responsibility of Verisign, Inc., to maintain the global Domain Name Servers to ensure that traffic may be directed to the correct location for the selected .COM domain name. The indicator of the provider of that service — the source identifying mark — is the name to the right of the dot.

Thus, every domain name in existence today includes a source-identifying mark for Registry Services to the right of the final "." in the domain name. Domains that end in .INFO receive their Registry Services from Afilias, Inc. Domains that end in .COM receive Registry Services from Verisign, Inc. For example, the domain name www.CNN.com indicates that Registry Services are provided by Verisign, Inc.

How would Trademark protection operate in the Top Level Domain industry? 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. Therefore, if the United States Patent and Trademark Office were to offer Trademark protection for Top Level Domains, it would only protect existing operators, and, for a limited amount of time, those applicants such as Domain Security Company LLC who plan on applying for a Top Level Domain in the immediate future.

Should trademark applications for generic terms be approved for the Top Level Domain industry? We submit that the United States Patent and Trademark Office should apply existing trademark law equally across all industries. If a term is merely descriptive of the service being provided, then the term should not be eligible for Trademark protection. Thus, the term ".RegistryServices" would not be eligible for Trademark Protection in the Registry Services business class on the grounds that the string "RegistryServices" is merely descriptive of the service to be provided. However, a term such as .BLUE or .SAS would be eligible for trademark protection, since neither term is descriptive of the services to be provided within the applied for business class.

This is an exciting time in the development of the Top Level Domain market. Never before has the Top Level Domain market experienced a time of such rapid expansion. According to ICANN's Bylaws (Core Value # 3 in Section 2 of the ICANN Bylaws), ICANN is required, to the extent feasible and appropriate, to delegate coordination functions or recognize the policy role of other responsible entities that reflect the interests of affected parties. During this time of rapid change, it is not necessary to rewrite global Trademark law. Instead, ICANN should uphold its Core Values and work with the global Trademark offices to ensure that entities like the United States Patent and Trademark Office are encouraged to update their policies to provide Trademark protection for Top Level Domains.

By Mary Iqbal, Founder of DotAnything.co

Related topics: ICANN, Law, Top-Level Domains

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Comments

.BANK is neither Intellectual, nor Property Thomas A Gilles  –  Mar 20, 2012 6:49 PM PDT

So, what you're saying is that the first person with 300 bucks and the brilliant and original idea to file a trademark for .bank should be awarded the tld registry rights, because $185,000 application fee is too much to risk?

So, if I was the first person to the trademark office with an intent to use application for .games, I own the rights. Nobody else need apply, it's mine. Proof of use can be delayed for up to 3 years. Best 300 bucks I ever invested.

TLDs are not invented, they already exist in theory. Just put a '.' in front of a dictionary word, stick it in the root zone, configure some hardware and you're off. That's not highly intellectual.

TLD registries are not property, are not owned. They are a 10 year revocable contract between the service provider and ICANN.

Registries also cannot sell their second level names to the end user. They must sell through ICANN accredited registrars and resellers who meet the 'reasonable requirements' to maintain the integrity of the tld.

How can an entity which is, by contract, not allowed to sell to end users own the trademark rights?

There are those who would not consider Mary Iqbal  –  Mar 21, 2012 8:04 PM PDT

There are those who would not consider "flipping burgers" an intellectual pursuit.  Nevertheless, the McDonald's trademark is one of the most valuable trademarks in the world. 

American Manufactures such as Rubbermaid do not sell directly to consumers, but instead choose to make their products available to consumers through distributors such as Wal-Mart.  There are many ways to structure a supply chain.  An organizations distribution strategy does not invalidate its owners constitutional rights.

The fact that there are those who would game the system is no excuse for throwing out the rulebook.

Trademark registration does not give its owner the right to open a Registry.  Only ICANN can approve Registries.  For example, the United States Patent and Trademark Office has granted various trademarks for telecommunications services to AT&T;.  However, the Federal Communications Commission (FCC) retains the authority to allocate the right to operate on specific frequencies within certain geographic areas.  In the same way, we assert that the United States Patent and Trademark Office must retain authority to administer trademark law for Top Level Domains, while ICANN should retain the authority to manage the Internet naming system and to approve operating agreements for new/existing Registry Services providers.

TLD Registries are not Owned Thomas A Gilles  –  Mar 21, 2012 9:40 PM PDT

I would say the difference between the Rubbermaid/McDonalds comparison is that they do indeed OWN their business. Rubbermaid invented and owns patents for sealing containers. They rightfully own the product and trademarks and can freely dictate the chain of supply and distribution model.

Registries are not owned. They operate under a revocable contract with ICANN. It is that contract that defines their distribution and supply chain.

gTLD Registries are contractually required to offer equal access to ANY qualified registrar and their resellers that meet the 'reasonable requirements' to maintain the TLD. They cannot discriminate. How can a trademark be enforced when the owner is contractually required to provide equal access to all qualified registrars and resellers? How is a registrar, or reseller supposed to be able to compete when they are unable to freely use .bank,or dotBANK?

A TLD trademark has potential to interfere with competition and could result in a monopoly situation, potentially causing harm to end users who otherwise might benefit from competition for their business.

Why should just one applicant who intends to apply for a string deserve protection? Should not all potential applicants receive the same consideration in the evaluation process?

I'm not an attorney and would love to see a qualified person participate here.

Nail. Head. Bang. John Berryhill  –  Mar 22, 2012 7:45 AM PDT

Thomas, there is not much to add to your several observations.  You are correct that this notion of gTLD's as marks undermines ICANN's ability to enforce the registry contract.  You are also correct that when the point of a registry is to allow others to use the "mark" without restrictions, then the necessary condition of the mark as a quality indicator of the goods or services within the control of the licensor is absent.

How "qualified" one needs to be here is up for grabs, with statements like "An organizations distribution strategy does not invalidate its owners constitutional rights." There is no "constitutional right" to trade or service mark registration.  In the first place, trademark rights in the US do not arise under the Constitution.  The Lanham Act codified a registration system for federal registration and protection of underlying common law rights.  US trademark law is within the permissible scope of the powers of Congress under the Commerce Clause to regulate commerce among the states, which is thoroughly distinct from the patent and copyright clause.  There is no "Constitutional right" involved.

The "AT&T;" analogy is likewise severely flawed.  The FCC does not dictate any regulations with respect to the use of AT&T;'s mark for its services.  The FCC dictates how AT&T;must conduct certain technical operations, but is not granting any license, permission or anything else in relation to the mark "AT&T;" itself.  That situation has zip, zilch, zero, nada to do with the relation between ICANN and a registry in which the subject matter of the regulation is itself the grant of the ability to use the TLD string and under what conditions.  How a long distance company brands itself has nothing to do with anything under FCC regulation.  In other words, the FCC is not saying, "Here are the conditions under which you can use 'AT&T;'", but ICANN is certainly saying "Here are the conditions under which you can operate .foo as a TLD".  Those two situations have nothing in common as they relate to the ability to use "AT&T;" and ".foo" respectively.

There are die-hards out there who persist in the belief that filing pieces of paper with the USPTO is going to give them some sort of leg-up in the TLD application process.  If this article is reflective of the understanding of basic trademark principles among that community of die-hards, then I wouldn't lose any sleep over the odds of their success in making that case.

Response Mary Iqbal  –  Mar 22, 2012 9:25 PM PDT

The United States Patent and Trademark Office was founded by an act of Congress under powers granted in Article I, Section 8 of the United States Constitution.  This fact can be verified on the United States Patent and Trademark Office’s website on the bottom half of this page. http://www.uspto.gov/about/bios/cohn_bio.jsp All acts of Congress are required to have a Constitutional basis.

The ICANN Registry agreement is, indeed, a 10-year contract.  ICANN does have the right to revoke the operating agreement for breach of contract, however, ICANN should not have the right to take a Registry from one operator and give it to another.

The FCC can revoke AT&T;'s right to operate on certain frequencies.  However, the FCC cannot take the AT&T;brand and give it to someone else.  In the same way, ICANN should have the right to revoke a Registry's operating agreement.  ICANN should not have the authority to take a company's business and give it to another Registry.  It's about checks and balances.  The USPTO must function as a “check” by protecting the private property rights of trademark registrants.  The commenter states that the FCC analogy is flawed and then proceeds to make the point that "The FCC does not dictate any regulations with respect to the use of AT&T;'s mark for its services.  The FCC dictates how AT&T;must conduct certain technical operations" That is my point exactly.  ICANN should approve contracts and maintain and enforce technical requirements. ICANN should not have the power to reassign brands from one company to another.  The .COM top level domain is clearly a brand with a very strong brand preference.  Over 70% of domains today were purchased within the .COM namespace.

Mr. Barryhill states that "the necessary condition of the mark as a quality indicator of the goods or services within the control of the licensor is absent".  Such is not the case.  Different Top Level Domains offer very different services.  For example, the .XXX Top Level Domain provides regular security scans for all of its domain customers.  The .PRO Top Level Domain verifies the professions of many of its domain holders.  The .ORG TLD was the first to deploy DNSSEC.  Each TLD offers different price points.  Each may have slightly different take down methodologies.  Some, like .MUSEUM and .AERO have requirements that webmasters operate within a specific industry, etc.  These are just a few examples that show each Top Level Domain is different, and provides different services to its customers. 

A recent article on CircleID called for the seizure of the .COM Top Level Domain and argued that .COM should be given to Google, merely because, in the author's opinion, .COM's prices were too high.  It has been well demonstrated that private property rights increase prosperity for all by spurring investment.  Do we really want to hamper the growth of the Internet by doing away with private property rights?  (http://www.circleid.com/posts/google_free_public_dns_load_tops_verisign_raising_dot_com_contract_question/) The suggestion that trademark rights would create a monopoly and prevent competition is not correct.  Trademark rights promote investment and encourage competition.

You missed the point John Berryhill  –  Mar 23, 2012 10:46 AM PDT

Yes, the Constitution authorizes Congress to fund a navy too.  My question was where you are finding a Constitutional right to trademark registration.  I mentioned that authority for the Lanham Act does not arise under the patent and copyright clause, but that still managed to sail right past you, as explained in the thread below. 

"In the same way, ICANN should have the right to revoke a Registry's operating agreement.  ICANN should not have the authority to take a company's business and give it to another Registry."

When the business itself consists of handing out ".tld" names, then one has to make up one's mind which one of those sentences should be true.  ICANN did exactly that with .org, and when .org was re-assigned, there was no ensuing trademark objection by Verisign to that happening.  But when the Bell System was broken up by the Justice Department, AT&T;'s "business" was indeed substantially re-structured and re-assigned to the regional Bell operating companies without affecting their right to use the AT&T;mark.

Again, the regulation of technical operations by AT&T;by the FCC does not relate to whether and how that company may use "AT&T;".  However, the regulation of technical operations of a TLD by ICANN inherently does involve the use and potential re-assignment of the TLD string itself. 

The "quality control" requisite to maintaining a trademark in a licensing situation is over the goods and services offered under the mark.  This is not a matter of services provided to registrants, but relates to the control of the quality of goods and services offered under the "mark". 

The bottom line is encapsulated in your use of the term "private property" with respect to TLD's.  Delegation of a TLD string by ICANN is stewardship of a public trust, and not a grant of a private dukedom.  What a TLD "is" is principally defined by RFC 1591 which states:

"Concerns about 'rights' and 'ownership' of domains are
inappropriate.  It is appropriate to be concerned about
'responsibilities' and 'service' to the community."

Whatever rights arise from a TLD delegation are not property rights.  The rights incident to a TLD delegation are whatever rights are established under the contract between ICANN and the TLD operator. The decision on which TLDs to put into the root, and who is going to have the responsibility of operating them is ICANN's.  Nobody is stopping you from building whatever business you'd like around whatever brand you'd like.  But so long as your ability to operate as a registry is contingent upon your compliance with your duties to ICANN and the internet community who has entrusted you with stewardship of a TLD, then this approach to that stewardship responsibility by claiming "it's mine" like Scrooge McDuck is an early indication that those who are taking that approach may not be the best candidates to bear the responsibility of a TLD delegation on behalf of the internet community.

.BANK is more like Kona Coffee than Starbucks Thomas A Gilles  –  Mar 23, 2012 12:13 PM PDT

Thank You John for so eloquently and effectively expanding the issue.

Mary You said that my 'suggestion that trademark rights would create a monopoly and prevent competition is not correct.'

Is not accurate.

Not if you are talking about competition WTHIN a SPECIFIC TLD.

The vertical integration policy change is going to create new opportunities, make some registries viable that would otherwise not be. But, it also will inspire anti competitive behavior on the part of registry/registrar business models.

I fully anticipate registries attempting to control their entire supply chain, from manufacture thru retail and corner the market for end users in their specific TLD. They will have NO interest in allowing registrars or resellers into their market.

I expect to see prohibitive Registrar Accreditation Agreements with unreasonable deposit requirements, cumbersome technical requirements and lax responsiveness towards accredidation. We will see aggressive wholesale pricing strategies that will make competitive independent registrar and reseller models practically impossible.

A Registry that holds a trademark for their '.TLD' or 'dotTLD' would have another weapon to put up barriers to entry in their specific TLD end user market, By attempting to limit, or control use of that word in media.

These barriers will ultimately harm end users. Because otherwise innovative, competitive ideas will not be able to compete with the registry/registrar and bring different services and competitive pricing to end users of that specific TLD.

I'm just grateful that competition issues do not rely solely upon the ICANN Compliance Department venue for remedy and relief.

The 'It's Mine' approach is misguided. The TLD is meant to serve end users, and as John again pointed out, is not owned.

Let's use the coffee market as an analogy.

Where 'Coffee' is the entire TLD market

.BANK would be more similar to 'Kona Coffee' Than 'Starbucks'

Many different sellers and brands can offer 'Kona Coffee' under different packaging, promotion,features, and pricing.

That promotes competition which ultimately benefits the end user. The same should be true in any new tld.

But what you are suggesting is that only one supplier can claim rights to 'Kona Coffee', can dictate and control use of the words 'kona coffee'.

A registry is like the Island of Kona. They supply the initial product, but it is the roasters, distributors, and marketers that sell the coffee to end users. The market benefits from that

Kona Island does not own the trademark for 'Kona Coffee'

The .BANK registry should not own the trademark for .BANK.

Every person who reads '.bank' or the synonymous 'dotBANK' will instantly recognize it as a top level domain.

It is what it is. And that is not trademarkable.

This system would be gamed wholesale Kevin Murphy  –  Mar 21, 2012 2:20 AM PDT

If TLDs were trademarkable, Mary would never have had a chance to apply for .bank because every single halfway attractive dot-keyword trademark would have been in the hands of domainers, gamers and trademark trolls for years before she ever had the idea.

Entrepreneurs like Mary would be locked out purely because the people who know how to play the domain game are more sophisticated than those who have a genuine interest in running a registry.

"This statement reflects a misunderstanding of the function of a Top Level Domain." John Berryhill  –  Mar 22, 2012 7:19 AM PDT

...and that statement reflects a misunderstanding of how a trademark functions.

If a consumer goes to Google.com, they are not seeking any goods and services of Verisign, they are seeking the goods and services of Google.  The ".com" in Google.com is not promoting Verisign's brand, it is signifying an internet address the same way that "800" signifies a toll-free telephone number.

When you register a ".com" name, at what point, Mary, do you enter into a trademark licensing agreement with Verisign to use that ".com" mark?  Never.  In fact, the domain registrant doesn't enter into any contract with the registry whatsoever.  Likewise, another key indicator of a trademark - control over the quality of the licensed goods and services - also does not apply to the relationship of Verisign to the registrant of the domain name.

The entire point of a trademark is to act as a distinctive identifier of the goods and services originating with that source.  Absolutely, your zip code is assigned by the US Postal Service, but when you print your address on your business card, you are not saying, "Here is a service offered by the USPS" and advertising their business, you are advertising yours.  A top-level domain name is not reserved to the use of the registry to advertise their products.  Again, the point of a generic top-level domain is to allow OTHERS to use that top-level domain name for any purpose they'd like.

Now, there can be situations, such as in a chartered TLD in which the users must enter into some sort of agreement with the registry operator by which the registry operator is certifying some sort of compliance, membership, or quality of the goods and services rendered when the domain name is licensed.  For example, if the National Association of Realtors obtained .realtor and only assigned domain names to their member Realtors, then the ".realtor" would be an indicator of membership in the NAR, and would still function as what is known as a certification mark.

TLDs themselves are not the property of the registry.  The ability to operate a TLD in the IANA root is contingent on periodic renewal of one's registry agreement with ICANN.  So, Mary, explain how the system is supposed to work if a registry operator, with a "TLD trademark" breaches its contract with ICANN and ICANN re-assigns the TLD to another registry operator?  Does the trademark somehow automatically get re-assigned along with it?  Or is the prior registry then entitled to sue the new registry, and all of the domain registrants, for trademark infringement?

Finally, you put the proposition as if it is some sort of decision of the USPTO to decide what is or what is not a trade or service mark.  That's simply not how it works.  The USPTO follows the law, it does not make the law.  So, unless you are going to address the underlying rationale for all of the "800 number" judicial decisions, which follow the same principle and on which this one is based, or explain why you believe Image Online Design v. CORE arrived at the wrong result, putting the proposition as if it were some sort of administrative decision within the authority of the USPTO is simply barking up the wrong tree.

"We submit that the United States Patent and Trademark Office should apply existing trademark law" John Berryhill  –  Mar 22, 2012 10:09 AM PDT

Let's see if we can simplify this:

Mary, does Image Online Design, Inc. v. Core Association, et al.
2000 U.S. Dist. Lexis 10259, 120 F.Supp. 2d 870 (C.D. Ca., July 21, 2000) count, in your mind, as "existing trademark law" or not?

Because that is the law that the USPTO is applying in relation to the general disqualification of "TLD string as a mark for registry services".

If there is some law you believe the USPTO is somehow not applying, then could you do us the favor of identifying what law you think needs to be applied here?

Response Mary Iqbal  –  Mar 22, 2012 8:33 PM PDT

Regarding the Image Online Design, Inc. v. Core Association case (http://www.internetlibrary.com/cases/lib_case97.cfm), the reason that Trademark rights were denied in this instance had to do with the string itself.  Trademark law has an exception across all industries which, in essence, stipulates that a word cannot be trademarked if the word is merely descriptive of the service being provided.  Generally speaking, if the trademarked string answers "what are you" instead of "who are you" then the string is not eligible for Trademark protection.  To quote the article above, the court found that “When used in conjunction with a web site, ".web" as a gTLD answers the question "What are you" - a web site related to the operation of the World Wide Web — and not "Where do you come from." In the same way, the term ‘.TLD’ would not be a trademarkable string for the Registry Services industry, although it would be trademarkable in every other industry.  Therefore, no, I do not think that the case you have referenced was a blanket rejection of Trademark protection for the Registry Services industry. 

To answer your second question, there is a specific USPTO policy which I disagree with.  That policy is as follows: 

" 1215.02(d) Marks Comprised Solely of TLDs for Domain Name 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 must 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 United States Patent and Trademark Office was founded by an act of Congress under powers granted in Article I, Section 8 of the United States Constitution.  Article 1, Section 8 States that "The Congress shall have Power....to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." The United States Patent and Trademark Office's policy above effectively denies constitutional intellectual property protections across the board for one particular industry on the grounds that – when this policy was enacted at least – most people did not know what a Top Level Domain was.  That policy is at least 10 years old, and since then, Top Level Domains have been repeatedly advertised in the Super Bowl and in other prime time television ads.

Most notably, the .CO Top Level Domain was recently advertised in the Super Bowl as a specific product available for purchase at the GoDaddy.com website.  Additionally, .NET domain names are advertised as “A place for big ideas” via banner advertising on websites including LinkedIn and BizJournals.com.  It is no longer accurate to say that most people do not understand that a .COM or .NET purchase is different from a .CO purchase.

Furthermore, a technical understanding of the function and technical aspects of a Top Level Domain should not be necessary for trademark protection.  For example, Accumulators, Inc. sells Accumulators. According to the Accumulators, Inc. website, which is located at http://www.accumulators.com/technical-information.html, “There are many applications and uses for accumulators. We often say it is the most widely used, unknown product in the world.”

Even though the product is not understood by the general public, the term “ACCUMIGHT” was registered in 1996 under registration number 1972929 by Accumulators, Inc., and is currently being used in commerce for the sale of AccuMight® Diaphragm Accumulators, which are designed primarily for pulsation dampening and fluid storage in the off-road and mobile markets.

The main point in this instance is that while the general public may not be aware of the accumulator market, those customers who wish to purchase an accumulator do understand what the product is and they are aware of the different brand choices that are available to them.  In the same way, webmasters and domainers are aware that the purchase of a .NET or .COM domain name is a fundamentally different purchase from an .XXX domain name.

Furthermore, when new Top Level Domains like ‘.unicef’ start coming onto the market, it will be very difficult, indeed, to prove that customers will not perceive .unicef as a source-identifying mark.  Indeed, the entire purpose of large companies applying for branded Top Level Domains is to emphasize that all domains within their branded TLDs are operated by the brand indicated to the right of the dot.

With all due respect, you are hopelessly confused John Berryhill  –  Mar 23, 2012 9:56 AM PDT

Mary, as I mentioned above, the Constitutional authority for the Lanham Act does not come from the patent and copyright clause.  The section of the constitution empowering Congress to provide exclusive rights for limited times to authors and inventors relates solely to copyrights and to patents.  As it might occur to you there is no "limited time" for trademark protection, which is fundamentally a common law right existing as long as a mark is used (and registrations can be extended indefinitely, unlike patents or copyrights).  Part of the reason for its passage was to codify common law principles which federal courts had been applying prior to Erie v. Tompkins.  There is no polite way to simply state that you do not understand the legal basis for federal trademark protection in the United States.  The Lanham Act is based in the authority of Congress to regulate interstate commerce, which is why an allegation of interstate commerce is required in a trademark registration application.  This is explained in the first paragraph of the Wikipedia entry on US trademark law, noting the reason why the first federal trademark law was indeed struck down as improperly based in the patent and copyright clause (http://en.wikipedia.org/wiki/United_States_trademark_law).

Absolutely, ".co" names are advertised as being able for purchase, the same way that "dog food" is advertised for purchase by my local supermarket.  That doesn't make ".co" a trade or service mark any more than "dog food".  Again, you are missing the point of the purpose for which TLD strings are advertised for use by others.  They are advertised to prospective registrants so that those registrants can use the string for whatever purpose they'd like.  This is fundamentally different from the way that trademarks work.  When I buy a BMW-branded automobile, I am not purchasing a license to use "BMW" as part of my business name, identitity, or whatever.  I'm just buying the car.  But when I buy a gTLD domain name, that's exactly what I'm getting - the unrestricted ability to use the gTLD string however I would like to use it. 

Your last paragraph, involving a TLD based on a pre-existing brand, is a different kettle of fish.  As I noted above, there are different considerations when a chartered TLD is based on a pre-existing brand.  Absolutely, if BMW obtains .bmw, and that TLD is reserved exclusively to the use of authorized registrants, such as dealers etc., then the brand owner IS exercising quality control over the goods and services offered by the registrants of the domain name, as well as the right to control who uses it.  But, again, relative to gTLD's, that is mixing apples and oranges.

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New Chinese "Mobile" Top-Level Domain Now Available

New .KIM Domain Goes Live

Welcome .SHIKSHA! General Availability Now Open

Adrian Kinderis Appointed as Chair of Domain Name Association

Internet Reaches 271 Million Domain Names in the Fourth Quarter of 2013

The Future of Chinese Domain Names (a Panel Discussion)

dotStrategy Selects Neustar's Registry Threat Mitigation Services for .BUZZ Registry

Tony Kirsch Announced As Head of Global Consulting of ARI Registry Services

Afilias Chairman Appointed to Domain Name Association Board

.BUILD Enters Landrush with Support of ARI Registry Services

Radix Awards Contracts for .website, .host, .space, and .press to CentralNic plc

DotConnectAfrica Statement Regarding NTIA's Intent to Transition Key Internet Domain Name Function

Afilias Welcomes "Dot Chinese Online" and "Dot Chinese Website" Top-Level Domains to the Internet

Afilias Joins Internet Technical Leaders in Welcoming IANA Globalization Progress

Afilias Welcomes .ONL and .RICH to the Internet

Neustar Selected to Continue Administering the .US Domain

The Practicalities of a New Domain Launch

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