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
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