NEWS USPTO reveals gTLD trademark rules
Te US Patent and Trademark Office (USPTO) has published draſt rules for examining trademark applications for generic top-level domains (gTLDs).
USPTO policy prevents people registering trademarks for gTLDs because consumers view suffixes merely as a portion of a web address, not as an indicator of goods and services.
But the pending introduction of more than
1,000 gTLDs means there are some applications corresponding to existing trademarks, therefore forcing the USPTO to re-work its examination guidelines.
Under draſt rules published in August, which are open for public comment until September 8, the USPTO says applicants must pass three tests to have their gTLD trademarks approved.
First, the applied-for gTLD trademark —the “dot” will be disregarded—must match an active US trademark registration covering the same subject matter of the websites that will be registered under the gTLD.
For example, if an applicant submits prior registrations identifying its goods as “automobiles”
and its services as “automobile dealerships”, the services in the gTLD application may be identified as “domain-name registration services for websites featuring automobiles and information about automobiles”.
Applicants must also submit a “significant” amount of additional evidence, such as advertising or promotional materials, to show that the gTLD trademark will immediately function as a source identifier.
“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,” the USPTO said.
Te agency is also demanding applicants provide evidence that they have signed a registry contract with ICANN to operate the applied-for gTLD. Without such evidence, trademark applications will be rejected.
Finally, applications must provide a “legitimate service for the benefit of others”, the USPTO said,
with examiners instructed to consider questions such as “to what entities and industries will the applicant’s domain-name registration or registry services be targeted?”
Te agency added: “While operating a gTLD registry that is only available for the applicant’s employees or for the applicant’s marketing initiatives alone generally would not qualify as a service, registration for use by the applicant’s affiliated distributors typically would.”
Dave Wong, partner at Barnes & Tornburg LLP in Indianapolis, said he was pleased the USPTO was providing some guidance on gTLDs.
“I’m glad the USPTO is thinking proactively and getting prepared, as a lot of US law tends to be reactive.
“It’s a bit surprising to see how detailed the proposals are, but the general premise is still there—that a trademark must function as a source identifier.”
One requirement that is more “concrete” than usual, Wong said, is for applicants to show that their corresponding US trademarks, rather than just the application itself, are being used in commerce.
14 World Intellectual Property Review September/October 2013
www.worldipreview.com
Page 1 |
Page 2 |
Page 3 |
Page 4 |
Page 5 |
Page 6 |
Page 7 |
Page 8 |
Page 9 |
Page 10 |
Page 11 |
Page 12 |
Page 13 |
Page 14 |
Page 15 |
Page 16 |
Page 17 |
Page 18 |
Page 19 |
Page 20 |
Page 21 |
Page 22 |
Page 23 |
Page 24 |
Page 25 |
Page 26 |
Page 27 |
Page 28 |
Page 29 |
Page 30 |
Page 31 |
Page 32 |
Page 33 |
Page 34 |
Page 35 |
Page 36 |
Page 37 |
Page 38 |
Page 39 |
Page 40 |
Page 41 |
Page 42 |
Page 43 |
Page 44 |
Page 45 |
Page 46 |
Page 47 |
Page 48 |
Page 49 |
Page 50 |
Page 51 |
Page 52 |
Page 53 |
Page 54 |
Page 55 |
Page 56 |
Page 57 |
Page 58 |
Page 59 |
Page 60 |
Page 61 |
Page 62 |
Page 63 |
Page 64 |
Page 65 |
Page 66 |
Page 67 |
Page 68 |
Page 69 |
Page 70 |
Page 71 |
Page 72 |
Page 73 |
Page 74 |
Page 75 |
Page 76 |
Page 77 |
Page 78 |
Page 79 |
Page 80 |
Page 81 |
Page 82 |
Page 83 |
Page 84 |
Page 85 |
Page 86 |
Page 87 |
Page 88 |
Page 89 |
Page 90 |
Page 91 |
Page 92 |
Page 93 |
Page 94 |
Page 95 |
Page 96 |
Page 97 |
Page 98 |
Page 99 |
Page 100 |
Page 101 |
Page 102 |
Page 103 |
Page 104 |
Page 105 |
Page 106 |
Page 107 |
Page 108 |
Page 109 |
Page 110 |
Page 111 |
Page 112 |
Page 113 |
Page 114 |
Page 115 |
Page 116 |
Page 117 |
Page 118 |
Page 119 |
Page 120 |
Page 121 |
Page 122 |
Page 123 |
Page 124 |
Page 125 |
Page 126 |
Page 127 |
Page 128 |
Page 129 |
Page 130 |
Page 131 |
Page 132 |
Page 133 |
Page 134 |
Page 135 |
Page 136 |
Page 137 |
Page 138 |
Page 139 |
Page 140 |
Page 141 |
Page 142 |
Page 143 |
Page 144 |
Page 145 |
Page 146 |
Page 147 |
Page 148 |
Page 149 |
Page 150 |
Page 151 |
Page 152 |
Page 153 |
Page 154 |
Page 155 |
Page 156 |
Page 157 |
Page 158 |
Page 159 |
Page 160 |
Page 161 |
Page 162 |
Page 163 |
Page 164 |
Page 165 |
Page 166 |
Page 167 |
Page 168 |
Page 169 |
Page 170 |
Page 171 |
Page 172 |
Page 173 |
Page 174 |
Page 175 |
Page 176 |
Page 177 |
Page 178 |
Page 179 |
Page 180 |
Page 181 |
Page 182 |
Page 183 |
Page 184 |
Page 185 |
Page 186 |
Page 187 |
Page 188 |
Page 189 |
Page 190 |
Page 191 |
Page 192 |
Page 193 |
Page 194 |
Page 195 |
Page 196