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MARKS COMPOSED, IN WHOLE OR IN PART, OF
DOMAIN NAMES
I. Introduction And Background *
II. Use as a Mark *
III. Surnames *
IV. Descriptiveness *
V. Generic Refusals *
VI. Marks Containing Geographical Matter *
VII. Disclaimers *
VIII. Material Alteration *
IX. Likelihood of Confusion *
X. Marks Containing The Phonetic Equivalent of A
Top Level Domain *
I. Introduction And Background
A domain name is part of a Uniform Resource Locator
(URL), which is the address of a site or document
on the Internet. In general, a domain name is comprised
of a second-level domain, a "dot," and
a top-level domain (TLD). The wording to the left
of the "dot" is the second-level domain,
and the wording to the right of the "dot"
is the TLD.
Example: If the domain name is "XYZ.COM,"
the term "XYZ" is a second-level domain
and the term "COM" is a TLD.
A domain name is usually preceded in a URL by "http://www."
The "http://" refers to the protocol used
to transfer information, and the "www"
refers to World Wide Web, a graphical hypermedia
interface for viewing and exchanging information.
There are two types of TLDs: generic and country
code.
Generic TLDs
Generic TLDs are designated for use by the public.
Each generic TLD is intended for use by a certain
type of organization. For example, the TLD ".com"
is for use by commercial, for profit organizations.
However, the administrator of the .com, .net, .org
and .edu TLDs does not check the requests of parties
seeking domain names to ensure that such parties
are a type of organization that should be using
those TLDs. On the other hand, .mil, .gov, and .int
TLD applications are checked, and only the U.S.
military, the U.S. government, or international
organizations are allowed in the domain space. The
following is a list of the current generic TLDs
and the intended users:
.com commercial, for profit organizations
.edu 4 year, degree granting colleges/universities
.gov U.S. federal government agencies
.int international organizations
.mil U.S. military organizations, even if located
outside the U.S.
.net network infrastructure machines and organizations
.org miscellaneous, usually non-profit organizations
and individuals
Country Code TLDs
Country code TLDs are for use by each individual
country. Each country determines who may use their
code. For example, some countries require that users
of their code be citizens or have some association
with the country, while other countries do not.
The following are examples of some of the country
code TLDs currently in use:
.jp for use by Japan
.tm for use by Turkmenistan
.tv for use by Tuvalu
.uk for use by the United Kingdom
Proposed TLDs
Due to growing space limitations, several new TLDs
have been proposed, including the following:
.arts cultural and entertainment activities
.firm businesses
.info entities providing information services
.nom individual or personal nomenclature
.rec recreation or entertainment activities
.store businesses offering goods to purchase
.web entities emphasizing activities related to
the web
While these proposed TLDs are not currently used
on the Internet as TLDs, applicants may include
them in their marks.
Applications for registration of marks composed
of domain names
Since the implementation of the domain name system,
the Patent and Trademark Office (Office) has received
a growing number of applications for marks composed
of domain names. While the majority of domain name
applications are for computer services such as Internet
content providers (organizations that provide web
sites with information about a particular topic
or field) and online ordering services, a substantial
number are for marks used on other types of services
or goods.
When a trademark, service mark, collective mark
or certification mark is composed, in whole or in
part, of a domain name, neither the beginning of
the URL (http://www.) nor the TLD have any source
indicating significance. Instead, those designations
are merely devices that every Internet site provider
must use as part of its address. Today, advertisements
for all types of products and services routinely
include a URL for the web site of the advertiser.
Just as the average person with no special knowledge
recognizes "800" or "1-800"
followed by seven digits or letters as one of the
prefixes used for every toll-free phone number,
the average person familiar with the Internet recognizes
the format for a domain name and understands that
"http," "www," and a TLD are
a part of every URL.
Applications for registration of marks consisting
of domain names are subject to the same requirements
as all other applications for federal trademark
registration. This Examination Guide identifies
and discusses some of the issues that commonly arise
in the examination of domain name mark applications.
II. Use as a Mark
A. Use Applications
A mark composed of a domain name is registrable
as a trademark or service mark only if it functions
as a source identifier. The mark as depicted on
the specimens must be presented in a manner that
will be perceived by potential purchasers as indicating
source and not as merely an informational indication
of the domain name address used to access a web
site. See In re Eilberg, 49 USPQ2d 1955 (TTAB 1998).
In Eilberg, the Trademark Trial and Appeal Board
(Board) held that a term that only serves to identify
the applicant’s domain name or the location
on the Internet where the applicant’s web
site appears, and does not separately identify applicant’s
services, does not function as a service mark. The
applicant’s proposed mark was WWW.EILBERG.COM
, and the specimens showed that the mark was used
on letterhead and business cards.
The Board affirmed the examining attorney’s
refusal of registration on the ground that the matter
presented for registration did not function as a
mark, stating that:
[T]he asserted mark, as displayed on applicant's
letterhead, does not function as a service mark
identifying and distinguishing applicant's legal
services and, as presented, is not capable of doing
so. As shown, the asserted mark identifies applicant's
Internet domain name, by use of which one can access
applicant's Web site. In other words, the asserted
mark WWW.EILBERG.COM merely indicates the location
on the Internet where applicant's Web site appears.
It does not separately identify applicant's legal
services as such. Cf. In re The Signal Companies,
Inc., 228 USPQ 956 (TTAB 1986).
This is not to say that, if used appropriately,
the asserted mark or portions thereof may not be
trademarks or [service marks]. For example, if applicant's
law firm name were, say, EILBERG.COM and were presented
prominently on applicant's letterheads and business
cards as the name under which applicant was rendering
its legal services, then that mark may well be registrable.
Id. at 1956.
The examining attorney must review the specimens
in order to determine how the proposed mark is actually
used. It is the perception of the ordinary customer
that determines whether the asserted mark functions
as a mark, not the applicant's intent, hope or expectation
that it do so. See In re Standard Oil Co., 275 F.2d
945, 125 USPQ 227 (C.C.P.A. 1960).
If the proposed mark is used in a way that would
be perceived as nothing more than an address at
which the applicant can be contacted, registration
must be refused. Examples of a domain name used
only as an Internet address include a domain name
used in close proximity to language referring to
the domain name as an address, or a domain name
displayed merely as part of the information on how
to contact the applicant.
Example: The mark is WWW.XYZ.COM for on-line ordering
services in the field of
clothing. Specimens of use consisting of an advertisement
that states "visit us on the web
at www.xyz.com" do not show service mark use
of the proposed mark.
Example: The mark is XYZ.COM for financial consulting
services. Specimens of use
consisting of a business card that refers to the
service and lists a phone number, fax
number, and the domain name sought to be registered
do not show service mark use of
the proposed mark.
Refusal of registration
If the specimens of use fail to show the domain
name used as a mark and the applicant seeks registration
on the Principal Register, the examining attorney
must refuse registration on the ground that the
matter presented for registration does not function
as a mark. The statutory bases for the refusals
are:
For trademarks: Trademark Act §§1, 2
and 45, 15 U.S.C. §§1051, 1052, and 1127
For service marks: Trademark Act §§1,
2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053
and 1127
If the applicant seeks registration on the Supplemental
Register, the examining attorney must refuse registration
under Trademark Act §23, 15 U.S.C. §1091.
B. Advertising One’s Own Products or Services
on the Internet is not a Service
Advertising one’s own products or services
is not a service. See In re Reichhold Chemicals,
Inc., 167 USPQ 376 (TTAB 1970); TMEP §1301.01(a)(ii).
Therefore, businesses that create a web site for
the sole purpose of advertising their own products
or services cannot register a domain name used to
identify that activity. In examination, the issue
usually arises when the applicant describes the
activity as a registrable service, e.g., "providing
information about [a particular field]," but
the specimens of use make it clear that the web
site merely advertises the applicant’s own
products or services. In this situation, the examining
attorney must refuse registration because the mark
is used to identify an activity that does not constitute
a "service" within the meaning of the
Trademark Act. Trademark Act §§1, 2, 3
and 45, 15 U.S.C. §§1051, 1052, 1053 and
1127.
C. Agreement of Mark on Drawing with Mark on Specimens
of Use
In a domain name mark (e.g., XYZ.COM or HTTP://WWW.XYZ.COM),
consumers look to the second level domain name for
source identification, not to the TLD or the terms
"http://www." or "www." Therefore,
it is usually acceptable to depict only the second
level domain name on the drawing page, even if the
specimens of use show a mark that includes the TLD
or the terms "http://www." or "www."
Cf. Institut National des Appellations D’Origine
v. Vintners Int’l Co., Inc., 954 F.2d 1574,
22 USPQ2d 1190 (Fed. Cir. 1992) (CHABLIS WITH A
TWIST held to be registrable separately from CALIFORNIA
CHABLIS WITH A TWIST); In re Raychem Corporation,
12 USPQ2d 1399 (TTAB 1989) (refusal to register
"TINEL-LOCK" based on specimens showing
"TRO6AI-TINEL-LOCK-RING" reversed). See
also 37 C.F.R. §2.51(a)(1) and TMEP §807.14
et. seq.
Example: The specimens of use show the mark HTTP://WWW.XYZ.COM.
The applicant may elect to depict only the term
"XYZ" on the drawing page.
Sometimes the specimens of use fail to show the
entire mark sought to be registered (e.g., the drawing
of the mark is HTTP://WWW.XYZ.COM, but the specimens
only show XYZ). If the drawing of the mark includes
a TLD, or the terms"http://www.," or "www.,"
the specimens of use must also show the mark used
with those terms. Trademark Act §1(a)(1)(C),
15 U.S.C. §1051(a)(1)(C).
Example: If the drawing of the mark is XYZ.COM,
specimens of use that only show the term XYZ are
unacceptable.
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
currently provided by Network Solutions, Inc. of
registering .com domain names), registration should
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 examining attorney should
include evidence from the NEXIS® database, the
Internet, or other sources to show that the proposed
mark is currently used as a TLD or is under consideration
as a new TLD.
If the TLD merely describes the subject or user
of the domain space, registration should be refused
under Trademark Act §2(e)(1), 15 U.S.C. §2(e)(1),
on the ground that the TLD is merely descriptive
of the registry services.
E. Intent-to-Use Applications
A refusal of registration on the ground that the
matter presented for registration does not function
as a mark relates to the manner in which the asserted
mark is used. Therefore, generally, in an intent-to-use
application, a mark that includes a domain name
will not be refused on this ground until the applicant
has submitted specimens of use with either an amendment
to allege use under Trademark Act §1(c), or
a statement of use under Trademark Act §1(d),
15 U.S.C. §1051(c) or (d). However, the examining
attorney should include an advisory note in the
first Office Action that registration may be refused
if the proposed mark, as used on the specimens,
identifies only an Internet address. This is done
strictly as a courtesy. If information regarding
this possible ground for refusal is not provided
to the applicant prior to the filing of the allegation
of use, the Office is in no way precluded from refusing
registration on this basis.
III. Surnames
If a mark is composed of a surname and a TLD, the
examining attorney must refuse registration because
the mark is primarily merely a surname under Trademark
Act §2(e)(4), 15 U.S.C. §1052(e)(4). A
TLD has no trademark significance. If the primary
significance of a term is that of a surname, adding
a TLD to the surname does not alter the primary
significance of the mark as a surname. Cf. In re
I. Lewis Cigar Mfg. Co., 205 F.2d 204, 98 USPQ 265
(C.C.P.A. 1953) (S. SEIDENBERG & CO'S. held
primarily merely a surname); In re Hamilton Pharmaceuticals
Ltd., 27 USPQ2d 1939 (TTAB 1993) (HAMILTON PHARMACEUTICALS
for pharmaceutical products held primarily merely
a surname); In re Cazes, 21 USPQ2d 1796 (TTAB 1991)
(BRASSERIE LIPP held primarily merely a surname
where "brasserie" is a generic term for
applicant's restaurant services). See also TMEP
§1211.01(b).
IV. Descriptiveness
If a proposed mark is composed of a merely descriptive
term(s) combined with a TLD, the examining attorney
should refuse registration under Trademark Act §2(e)(1),
15 U.S.C. §1052(e)(1), on the ground that the
mark is merely descriptive. This applies to trademarks,
service marks, collective marks and certification
marks.
Example: The mark is SOFT.COM for facial tissues.
The examining attorney must
refuse registration under §2(e)(1).
Example: The mark is NATIONAL BOOK OUTLET.COM for
retail book store
services. The examining attorney must refuse registration
under §2(e)(1).
The TLD will be perceived as part of an Internet
address, and does not add source identifying significance
to the composite mark. Cf. In re Page, 51 USPQ2d
1660 (TTAB 1999) (addition of a telephone prefix
such as "800" or "888" to a
descriptive term is insufficient, by itself, to
render the mark inherently distinctive); In re Patent
& Trademark Services Inc., 49 USPQ2d 1537 (TTAB
1998) (PATENT & TRADEMARK SERVICES INC. is merely
descriptive of legal services in the field of intellectual
property; the term "Inc." merely indicates
the type of entity that performs the services and
has no significance as a mark); In re The Paint
Products Co., 8 USPQ2d 1863 (TTAB 1988) (PAINT PRODUCTS
CO. is no more registrable as a trademark for goods
emanating from a company that sells paint products
than it would be as a service mark for retail paint
store services offered by such a company); In re
E.I. Kane, Inc., 221 USPQ 1203 (TTAB 1984) (OFFICE
MOVERS, INC. incapable of functioning as a mark
for moving services; addition of the term "Inc."
does not add any trademark significance to matter
sought to be registered). See also TMEP §1209.01(b)(12)
regarding marks comprising in part "1-800,"
"888," or other telephone numbers.
V. Generic Refusals
If a mark is composed of a generic term(s) for
applicant’s goods or services and a TLD, the
examining attorney must refuse registration on the
ground that the mark is generic and the TLD has
no trademark significance. See TMEP §1209.01(b)(12)
regarding marks comprised in part of "1-800"
or other telephone numbers. Marks comprised of generic
terms combined with TLDs are not eligible for registration
on the Supplemental Register, or on the Principal
Register under Trademark Act §2(f), 15 U.S.C.
§1052(f). This applies to trademarks, service
marks, collective marks and certification marks.
Example: TURKEY.COM for frozen turkeys is unregistrable
on either the
Principal or Supplemental Register.
Example: BANK.COM for banking services is unregistrable
on either the
Principal or Supplemental Register.
The examining attorney generally should not issue
a refusal in an application for registration on
the Principal Register on the ground that a mark
is a generic name for the goods or services unless
the applicant asserts that the mark has acquired
distinctiveness under §2(f) of the Trademark
Act, 15 U.S.C. §1052(f). Absent such a claim,
the examining attorney should issue a refusal on
the ground that the mark is merely descriptive of
the goods or services under §2(e)(1), and provide
an advisory statement that the matter sought to
be registered appears to be a generic name for the
goods or services. TMEP §1209.02.
VI. Marks Containing Geographical Matter
The examining attorney should examine marks containing
geographic matter in the same manner that any mark
containing geographic matter is examined. See generally
TMEP §§1210.05 and 1210.06. Depending
on the manner in which it is used on or in connection
with the goods or services, a proposed domain name
mark containing a geographic term may be primarily
geographically descriptive under §2(e)(2) of
the Trademark Act, 15 U.S.C. §1052(e)(2), or
primarily geographically deceptively misdescriptive
under §2(e)(3) of the Trademark Act, 15 U.S.C.
§1052(e)(3), and/or merely descriptive or deceptively
misdescriptive under §2(e)(1) of the Trademark
Act, 15 U.S.C. §1052(e)(1).
Geographic matter may be merely descriptive of
services provided on the Internet
When a geographic term is used as a mark for services
that are provided on the Internet, sometimes the
geographic term describes the subject of the service
rather than the geographic origin of the service.
Usually this occurs when the mark is composed of
a geographic term that describes the subject matter
of information services (e.g., NEW ORLEANS.COM for
"providing vacation planning information about
New Orleans, Louisiana by means of the global computer
network"). In these cases, the examining attorney
should refuse registration under Trademark Act §2(e)(1)
because the mark is merely descriptive of the services.
VII. Disclaimers
Trademark Act §6(a), 15 U.S.C. §1056(a),
provides for the disclaimer of "an unregistrable
component" of a mark. The guidelines on disclaimer
set forth in TMEP §1213 et. seq. apply to domain
name mark applications.
If a composite mark includes a domain name composed
of unregistrable matter (e.g., a merely descriptive
or generic term and a TLD), disclaimer is required.
See examples below and TMEP §§1213.03.
If a disclaimer is required and the domain name
includes a misspelled or telescoped word, the correct
spelling must be disclaimed. See examples below
and TMEP §§1213.04(a) and 1213.09(c).
A compound term composed of arbitrary or suggestive
matter combined with a "dot" and a TLD
is considered unitary, and therefore no disclaimer
of the TLD is required. See examples below and TMEP
§1213.04(b).
Mark Disclaimer
XYZ BANK.COM BANK.COM
XYZ FEDERALBANK.COM FEDERAL BANK.COM
XYZ GROCERI STOR.COM GROCERY STORE.COM
XYZ.COM no disclaimer
XYZ.BANK.COM no disclaimer
XYZBANK.COM no disclaimer
VIII. Material Alteration
Amendments may not be made to the drawing of the
mark if the character of the mark is materially
altered. Trademark Rule 2.72, 37 C.F.R §2.72.
The test for determining whether an amendment is
a material alteration was articulated in Visa International
Service Association v. Life-Code Systems, Inc.,
220 USPQ 740 (TTAB 1983):
The modified mark must contain what is the essence
of the original mark, and the new form must create
the impression of being essentially the same mark.
The general test of whether an alteration is material
is whether the mark would have to be republished
after the alteration in order to fairly present
the mark for purposes of opposition. If one mark
is sufficiently different from another mark as to
require republication, it would be tantamount to
a new mark appropriate for a new application.
Id. at 743-44.
Each case must be decided on its own facts. The
controlling question is always whether the new and
old form of the marks create essentially the same
commercial impression. TMEP §807.14(a).
Example: Amending the mark PETER, used on kitchen
pots and pans, from PETER to PETER PAN would materially
change the mark because adding the generic word
PAN dramatically changes the meaning of the mark
– from a person’s name, to a well known
storybook character’s name.
Adding or deleting TLDs in domain name marks
Generally, for domain name marks (e.g., COPPER.COM),
the applicant may add or delete a TLD to the drawing
of the mark without materially altering the mark.
A mark that includes a TLD will be perceived by
the public as a domain name, while a mark without
a TLD will not. However, the public recognizes that
a TLD is a universally-used part of an Internet
address. As a result, the essence of a domain name
mark is created by the second level domain name,
not the TLD. The commercial impression created by
the second level domain name usually will remain
the same whether the TLD is present or not.
Example: Amending a mark from PETER to PETER.COM
would not materially change the mark because the
essence of both marks is still PETER, a person’s
name.
Similarly, substituting one TLD for another in
a domain name mark, or adding or deleting a "dot"
or "http://www." or "www." to
a domain name mark is generally permitted.
Example: Amending a mark from XYZ.ORG to XYZ.COM
would not materially change the mark because the
essence of both marks is still XYZ.
Adding or deleting TLDs in other marks
If a TLD is not used as part of a domain name, adding
or deleting a TLD may be a material alteration.
When used without a second level domain name, a
TLD may have trademark significance. See TMEP §807.14(a).
Example: Deleting the term .COM from the mark .COM
? used on sports magazines would materially change
the mark.
IX. Likelihood of Confusion
In analyzing whether a domain name mark is likely
to cause confusion with another pending or registered
mark, the examining attorney must consider the marks
as a whole, but generally should accord little weight
to the TLD portion of the mark. See TMEP §1207.01(b)
et. seq.
X. Marks Containing The Phonetic Equivalent of
A Top Level Domain
Marks containing the phonetic equivalent of a TLD
(e.g., XYZ DOTCOM) are treated in the same manner
as marks composed of a regular TLD. If a disclaimer
is necessary, the disclaimer must be in the form
of the regular TLD and not the phonetic equivalent.
See TMEP §1213.09(c).
Example: The mark is INEXPENSIVE RESTAURANTS DOT
COM for
providing information about restaurants by means
of a global computer network.
Registration should be refused because the mark
is merely descriptive of the
services under Trademark Act §2(e)(1), 15 U.S.C.
§1052(e)(1).
Example: The mark is XYZ DOTCOM. The applicant must
disclaim the
TLD ".COM" rather than the phonetic equivalent
"DOTCOM."
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