Under the USPTO proposed examination guide, entitled “Applications for Marks Comprised of gTLDs for Domain Name Registration or Registry Services,” you will have to have a contract with ICANN to operate a new gTLD registry before you apply for a trademark for the gTLD:
“The applicant must show that: (i) it has entered into a currently valid agreement with ICANN (a “Registry Agreement”) designating the applicant as the entity responsible for operation of the registry, i.e., maintaining the database and generating the zone file (the “Registry Operator”) for the gTLD identified by the mark; and (ii) the identified services will be primarily for the benefit of others.”
All of the requirements, as described more fully below, must be satisfied.
1. Applicant Must Provide Evidence that the Applied-For Mark Will Be Perceived as a Source Identifier
Please discuss this section of the guide here.
a. Prior Registration(s) of the same Mark for goods or services in the same field of use as the domain name registration/registry services
The applicant must submit evidence that the gTLD shown in the applied-for mark is the subject of one or more currently active prior U.S. registrations for goods or services that are related to the identified subject matter of the websites to be registered via the applied for domain name registry/registration services by establishing:
1. Ownership of a currently active U.S. registration on the Principal Register for the same mark based on use in commerce under Section 1 of the Trademark Act ; or
2. Ownership of a U.S. registration on the Principal Register for the same mark based on either a foreign registration under Section 44(e) of the Trademark Act for which an affidavit of use in commerce under Section 8 of the Trademark Act has been accepted or a Madrid Protocol registration under Section 66(a) of the Trademark Act for which an affidavit of use in commerce under Section 71 of the Trademark Act has been accepted.
The submitted prior U.S. registration must show the same mark as shown in the applied-for mark. However, the lack of a “.” or “dot” in the submitted prior U.S. registration is not determinative as to whether or not the mark in the prior U.S. registration is the same as the mark in the application. In addition, the submitted prior U.S. registration must contain only the wording that makes up the gTLD, and must not include a disclaimer of such wording. The registration may be registered pursuant to Section 2(f) of the Trademark Act.
Because a consumer’s ability to recognize a gTLD in an application as a source identifying mark is based, in part, on the applicant’s prior registration(s) for the same mark, the applicant must limit the “field of use” for the identified domain-name registration or registry services to fields that are related to the goods/services listed in the submitted prior registration(s). For example, if the applicant submits prior registrations identifying its goods as “automobiles” and its services as “automobile dealerships,” the services in the application may be identified as “domain-name registration services for websites featuring automobiles and information about automobiles.” However, the applicant may not identify its services as either “domain-name registration services for websites featuring information about restaurants” or merely as “domain name registration services.”
If the applicant does not specify a field of use for the identified domain name registration or domain name registry services, or specifies a field of use that includes goods/services not listed in the prior registration(s), the examining attorney must require the applicant to amend the identification of services so as to indicate only a field of use that is related to, goods/services that are the subject of the submitted prior registration(s). In amending the identification, the applicant may not broaden the scope of the identification.
If the application is not amended, or cannot be amended, to specify a field of use that is related to the goods/services listed in the submitted prior registration(s), the examining attorney must refuse registration under Trademark Act §§1, 2, 3, and 45 because, absent a relevant prior registration, the gTLD would not be perceived by consumers as a mark.
b. Additional Proof that the Mark Used as a gTLD Will Be Perceived as a Mark
In addition to the prior registration(s), the applicant must also submit a significant amount of additional evidence relevant to the issue of whether the mark, with or without the “.” or “dot,” will immediately function to identify the source of the domain-name registration or domain-name registry services rather than merely being perceived as a portion of an Internet domain name that can be acquired through applicant’s services. Because consumers are so highly conditioned and may be predisposed to view gTLDs as non-source indicating, the applicant must show that consumers already will be so familiar with the wording as a mark, that they will transfer the source recognition even to the domain name registration or registry services. Such relevant evidence may include, but is not limited to: examples of advertising and promotional materials that specifically promote the mark shown in the application, with or without the “.” or “dot,” as a trademark or service mark in the United States; dollar figures for advertising devoted to such promotion; and/or sworn consumer statements of recognition of the applied-for mark as a trademark or service mark.
2. Registry Agreement/ICANN Contract
Please discuss this section of the guide here.
If the applicant has not entered into a Registry Agreement with ICANN designating the applicant as the Registry Operator for the gTLD identified by the mark, consumers may be deceived by use of a particular gTLD as a mark. Consumers generally would believe that the applicant’s domain-name registration or registry services feature the gTLD in the proposed mark, and would consider its availability material in the purchase of these services. Therefore, to avoid a deceptiveness refusal under Section 2(a) of the Trademark Act, the applicant must: (i) submit evidence that it has entered into a currently valid Registry Agreement with ICANN, designating the applicant as the Registry Operator for the gTLD identified by the applied-for mark prior to registration; and (ii) indicate in the identification of services that the domain registration or domain registry services feature the gTLD shown in the mark.
If the application does not include a verified statement indicating that the applicant has either an active, or currently pending application for a, Registry Agreement with ICANN designating the applicant as the Registry Operator for the gTLD identified by the applied-for mark, the examining attorney must issue an Office action with an information request that requires the applicant to submit a verified statement indicating the following: (i) whether or not the applicant has in place, or has applied for, such a Registry Agreement with ICANN; and (ii) if the applicant has so applied, the current status of such application. The examining attorney should include an advisory notice indicating that if the applicant does not have a currently active, or currently pending application for a, Registry Agreement with ICANN designating the applicant as the Registry Operator for the gTLD identified by the applied-for mark, a deceptiveness refusal will be issued pursuant to Section 2(a). A currently pending application with ICANN avoids an immediate deceptiveness refusal, but as discussed in greater detail below, the USPTO will not approve the trademark application for publication without proof of the award of the Registry Agreement.
If the applicant fails to respond to the information requirement, the examining attorney should maintain and continue the information requirement and issue a deceptiveness refusal under Section 2(a). If, in response to the information requirement, the applicant indicates: (i) that the applicant has not applied for a Registry Agreement with ICANN designating the applicant as the Registry Operator for the gTLD identified by the applied-for mark; (ii) that the applicant has applied for a Registry Agreement with ICANN designating the applicant as the Registry Operator for the gTLD identified by the applied-for mark, but that the application has not been approved and is no longer pending with ICANN; or (iii) that the applicant’s previous Registry Agreement with ICANN is no longer valid, then the examining attorney should issue a deceptiveness refusal under Section 2(a).
If: (i) the applicant indicates that it has a currently pending application before ICANN for a Registry Agreement designating the applicant as the Registry Operator for the gTLD identified by the applied-for mark; (ii) the applicant has otherwise successfully shown that the mark consisting of the gTLD in the application before the USPTO could function as a mark; and (iii) the application is otherwise in condition for approval for publication, allowance for registration on the Supplemental Register, or final action, then the examining attorney must suspend the application until the resolution of the applicant’s application for a Registry Agreement with ICANN.
