1215 Marks Composed, in Whole or in Part, of Domain Names
1215.01 Background
A domain name is part of a Uniform Resource Locator ("URL"), which is the address of a site or document on the Internet. 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.
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. A TLD is the string of letters that follows the last "." or "dot".
Example: If the domain name is "ABC.com," the term "ABC" is a second-level domain and the term "com" is a TLD.
Generic TLDs. If a TLD has three or more characters, it is known as a "generic top-level domain" or "gTLD." The following are examples of gTLDs designated for use by the public:
| .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 |
Each of the gTLDs listed above is intended for use by a certain type of organization. For example, the gTLD ".com" is for use by commercial, for-profit organizations. However, the administrator of the .com, .net, .org, and .edu gTLDs 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 gTLDs. On the other hand, .mil, .gov, and .int gTLD applications are checked, and only the U.S. military, the U.S. government, or international organizations are allowed in the respective domain space.
Country-Code TLDs. Country-code TLDs are for use by each individual country. For example, the TLD ".ca" is for use by Canada, and the TLD ".jp" is for use by Japan. Each country determines who may use its 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.
Seewww.icann.org and TMEP §§1215.02(d)(i)─1215.02(d)(iv) for additional information about other gTLDs and TMEP §1209.03(m) about descriptiveness or genericness of marks comprising domain names.
1215.02 Use as a Mark
Generally, 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 gTLD has any source-indicating significance. Instead, those designations are merely devices that every Internet site provider must use as part of its address. Advertisements for all types of products and services routinely include a URL for the website of the advertiser, and the average person familiar with the Internet recognizes the format for a domain name and understands that "http," "www," and a gTLD are a part of every URL.
However, in 2011, the Internet Corporation for Assigned Names and Numbers ("ICANN") authorized the launch of a program to introduce new gTLDs. Some of the gTLDs under consideration may have significance as source identifiers. To the extent that some of the new gTLDs under consideration comprise existing registered trademarks or service marks that are already strong source identifiers in other fields of use, some of the premises mentioned above may no longer hold true for such gTLDs (e.g., a gTLD consisting of a coined mark is not an abbreviation of an entity type or class of intended user of domain space). Where the wording following the "." or "dot" is already used as a trademark or service mark, the appearance of such marks as a gTLD may not negate the consumer perception of them as source indicators. Accordingly, in some circumstances, a gTLD may have source-indicating significance. See TMEP §1215.02(d))─1215.02(d)(iv) (mark consisting of a gTLD for domain-name registry operator and registrar services, where the wording following the "." or "dot" is already used as a trademark or service mark, may be registrable).
1215.02(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 specimen, must be presented in a manner that will be perceived by potential purchasers to indicate source and not as merely an informational indication of the domain name address used to access a website. See In re Roberts, 87 USPQ2d 1474, 1479 (TTAB 2008) (finding that irestmycase did not function as a mark for legal services, where it is used only as part of an address by means of which one may reach applicant’s website, or along with applicant’s other contact information on letterhead); In re Eilberg, 49 USPQ2d 1955, 1957 (TTAB 1998).
In Eilberg, the Trademark Trial and Appeal 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 website 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 specimen showed that the mark was used on letterhead and business cards in the following manner:
(The specimen submitted was the business card of William H. Eilberg, Attorney at Law, 820 Homestead Road, P.O. Box 7, Jenkintown, Pennsylvania 19046, 215-855-4600, email whe@eilberg.com.)
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.
Eilberg, 49 USPQ2d at 1957.
The examining attorney must review the specimen 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 does so. See In re The Standard Oil Co., 275 F.2d 945, 947, 125 USPQ 227, 229 (C.C.P.A. 1960).
If the proposed mark is used in a way that would be perceived as nothing more than an Internet address where 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.ABC.COM for online ordering services in the field of clothing. A specimen consisting of an advertisement that states "visit us on the web at www.ABC.com" does not show service mark use of the proposed mark.
Example: The mark is ABC.COM for financial consulting services. A specimen consisting of a business card that refers to the services and lists a telephone number, fax number, and the domain name sought to be registered does not show service mark use of the proposed mark.
If the specimen fails to show use of the domain name 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 §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, for trademarks; and §§1, 2, 3, and 45, 15 U.S.C. §§1051, 1052, 1053, and 1127, for service marks.
If the applicant seeks registration on the Supplemental Register, the examining attorney must refuse registration under Trademark Act §23, 15 U.S.C. §1091.
1215.02(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" under the Trademark Act. In re Reichhold Chems., Inc., 167 USPQ 376 (TTAB 1970). See TMEP §§1301.01(a)(ii) and 1301.01(b)(i). Therefore, businesses that create a website 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 specimen of use makes it clear that the website 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. The statutory basis for the refusal is Trademark Act §§1, 2, 3, and 45, 15 U.S.C. §§1051, 1052, 1053, and 1127.
1215.02(c) Agreement of Mark on Drawing with Mark on Specimens of Use
In viewing a domain name mark (e.g., ABC.COM or HTTP://WWW.ABC.COM), consumers generally look to the second-level domain name for source identification, not to the generic top-level domain (gTLD) 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 specimen shows a mark that includes a traditional gTLD (such as .COM) or the terms "http://www." or "www." However, if the mark depicted in the specimen includes a gTLD that serves a source-indicating function, the drawing of record must include such source-indicating gTLD. Cf. Institut Nat’l des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 22 USPQ2d 1190 (Fed. Cir. 1992) (CHABLIS WITH A TWIST held to be registrable separately from CALIFORNIA CHABLIS WITH A TWIST as shown on labels); In re Raychem Corp., 12 USPQ2d 1399 (TTAB 1989) (refusal to register TINEL-LOCK based on specimen showing "TRO6AI-TINEL-LOCK-RING" reversed). See also 37 C.F.R. §2.51(a)–(b), and TMEP §§807.12–807.12(e).
Example: The specimen shows the mark HTTP://WWW.ABC.COM. The applicant may elect to depict only the term "ABC" on the drawing.
Sometimes the specimen fails to show the entire mark sought to be registered (e.g., the drawing of the mark is HTTP://WWW.ABC.COM, but the specimen only shows ABC). If the drawing of the mark includes a gTLD, or the terms "http://www." or "www.," the specimen must also show the mark used with these terms. Trademark Act §1(a)(3)(C), 15 U.S.C. §1051(a)(3)(C).
Example: If the drawing of the mark is ABC.COM, a specimen that only shows the term ABC is unacceptable.
If, in an application in which the identification of services specifies or otherwise encompasses domain-name registry operator or registrar services, and the applied-for mark consists of or includes wording without a dot (".") before it, but the specimen provided shows use of the mark only with a "." before the wording, or vice versa, the examining attorney must refuse the specimen on the grounds that the marks do not match because the commercial impression created by the applied-for mark differs from the commercial impression created by the mark shown in the specimen. Specifically, when used in connection with domain-name registry operator or registrar services, wording immediately preceded by a "." will likely be viewed by consumers as a generic top-level domain (gTLD). On the other hand, the same wording, used in connection with the same services, but shown without the "." would not give the impression of a gTLD and could be viewed as an indicator of source, such that the commercial impression created by the marks materially differs. Thus, in this context, the "."does not constitute the type of "extraneous, nondistinctive punctuation" discussed in TMEP §807.12(a)(i) and the drawing may not be amended to add a "." to, or delete a "." from, the mark. See TMEP §1215.08(c).
Example: If the applied-for mark is TMARKIE for "domain-name registration services," a specimen that shows the mark as .TMARKIE is unacceptable.
See TMEP §§807.14–807.14(f) and 1215.08–1215.08(b) regarding material alteration.
1215.02(d) Marks Comprised Solely of gTLDs for Domain-Name Registry Operator and Registrar Services
A "registry operator" maintains the master database of all domain names registered in each top-level domain, and also generates the "zone file," which allows computers to route Internet traffic to and from top-level domains anywhere in the world, and a "registrar" is an entity through which domain names may be registered, and which is responsible for keeping website contact information records and submitting the technical information to a central directory (i.e., the "registry"). The terms "registry operator" and "registrar" refer to distinct services and are not interchangeable. Further, "registry operators" and "registrars" are distinguishable from re-sellers, which are entities that are authorized by registrars to sell or register particular Internet addresses on a given top-level domain. See Internet Corporation for Assigned Names and Numbers, Glossary, http://www.icann.org/en/about/learning/glossary (accessed March 19, 2014).
A mark composed solely of a gTLD for domain-name registry operator or registrar services fails to function as a trademark because consumers are predisposed to view gTLDs as merely a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services. Therefore, registration of such marks must initially be refused under Trademark Act §§1, 2, 3, and 45, 15 U.S.C. §§1051, 1052, 1053, and 1127, on the ground that the gTLD would not be perceived as a mark. However, the applicant may, in some circumstances, avoid or overcome the refusal by providing evidence that the mark will be perceived as a source identifier. In addition, the applicant must show that: (1) it has entered into a currently valid Registry Agreement with the Internet Corporation for Assigned Names and Numbers ("ICANN") designating the applicant as the Registry Operator for the gTLD identified by the mark and (2) the identified services will be primarily for the benefit of others.
If the gTLD merely describes the subject or user of the domain space, registration must be refused under Trademark Act §2(e)(1), 15 U.S.C. §1052(e)(1), on the ground that the gTLD is merely descriptive of the registry services.
1215.02(d)(i) Prior Registration(s) of the Same Mark for Goods or Services in the Same Field of Use
The applicant must submit evidence that the gTLD shown in the mark is the subject of one or more prior U.S. registrations for goods/services that are related to the identified subject matter of the websites to be registered via the domain-name registry operator and registrar services by establishing:
- (1) Ownership of one or more currently active U.S. registrations on the Principal Register for the same mark, based on use in commerce under §1 of the Trademark Act, 15 U.S.C. §1051, or
- (2) Ownership of a U.S. registration on the Principal Register for the same mark, based on either a foreign registration under §44(e) of the Trademark Act, 15 U.S.C. §1126(e), for which an affidavit of use in commerce under §8 of the Trademark Act, 15 U.S.C. § 1058, has been accepted, or a registration under §66(a) of the Trademark Act, 15 U.S.C. §1141(f)(a), for which an affidavit of use in commerce under §71 of the Trademark Act, 15 U.S.C. §1141k, has been accepted.
The prior U.S. registration(s) must show the same mark as that shown in the relevant application. However, the lack of a "." or "dot" in the prior U.S. registration(s) is not determinative as to whether the mark in the registration is the same as the mark in the application. In addition, the prior registration may be registered pursuant to §2(f) of the Trademark Act, 15 U.S.C. §1052(f).
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 registry operator and registrar 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 registry operator and registrar services for websites featuring automobiles and information about automobiles." However, the applicant may not identify its services as, for example, "domain-name registry operator and registrar services for websites featuring information about restaurants" or merely as "domain-name registry operator and registrar services."
If the applicant does not specify a field of use for the identified domain-name registry operator and registrar 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 prior registration(s). In amending the identification, the applicant may not broaden its scope. 37 C.F.R. §2.71(a); TMEP § §1402.06–1402.06(b).
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 prior registration(s), the examining attorney must refuse registration under Trademark Act §§1, 2, 3, and 45, 15 U.S.C. §§1051, 1052, 1053, and 1127, because, absent a relevant prior registration, the gTLD would not be perceived by consumers as a mark.
1215.02(d)(ii) 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 registry operator and registrar 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 registry operator and registrar services. The amount of additional evidence required may vary, depending on the nature of the wording set out in the gTLD, 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.
1215.02(d)(iii) Registry Agreement/ICANN Contract
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 registry operator and registrar services feature the gTLD in the proposed mark, and would consider that material in the purchase of these services. Therefore, to avoid a deceptiveness refusal under §2(a) of the Trademark Act, 15 U.S.C. §1052(a); TMEP §§1203, 1203.02–1203.02(g), the applicant must: (1) 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 mark prior to registration and (2) indicate in the identification of services that the domain-name registry operator and registrar services feature the gTLD shown in the mark.
If the application does not include a verified statement indicating that the applicant has 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 mark, the examining attorney must issue an Office action with an information request under Trademark Rule 2.61(b), 37 C.F.R. 2.61(b), that requires the applicant to submit a verified statement indicating: (1) whether the applicant has in place, or has applied for, such a Registry Agreement with ICANN and (2) if the applicant has so applied, the current status of such application. The examining attorney must include an advisory 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 mark, a deceptiveness refusal will be issued pursuant to §2(a). A currently pending application with ICANN avoids an immediate deceptiveness refusal, but as discussed 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 must maintain and continue the information requirement and issue a deceptiveness refusal under §2(a). If, in response to the information requirement, the applicant indicates that: (1) the applicant has not applied for a Registry Agreement with ICANN designating the applicant as the Registry Operator for the gTLD identified by the mark; (2) the applicant has applied for a Registry Agreement with ICANN designating the applicant as the Registry Operator for the gTLD identified by the mark, but that the application has not been approved and is no longer pending with ICANN; or (3) the applicant’s previous Registry Agreement with ICANN is no longer valid, the examining attorney must issue a deceptiveness refusal under §2(a).
If the applicant indicates that it has a currently pending application before ICANN for a Registry Agreement for the gTLD identified by the mark and the applicant has otherwise demonstrated that the mark consisting of the gTLD in the application before the USPTO could function as a mark, the examining attorney may suspend the application until the resolution of the applicant’s pending application with ICANN. See TMEP § 716.02(i).
1215.02(d)(iv) Legitimate Service for the Benefit of Others
To be considered a service within the parameters of the Trademark Act, an activity must, inter alia, be primarily for the benefit of someone other than the applicant. See In re Reichhold Chems., Inc., 167 USPQ 376, 377 (TTAB 1970); TMEP §1301.01(a)(ii). Therefore, the examining attorney must issue an information request pursuant to Trademark Rule 2.61(b), 37 C.F.R. 2.61(b), to ascertain the following information to determine if the domain-name registry operator and registrar services will be primarily for the benefit of others:
- Does the applicant intend to use the applied-for mark as a gTLD?
- Does the applicant intend to operate a registry for the applied-for mark as a new gTLD and sign a Registry Agreement with ICANN for such gTLD?
- To what entities and industries will the applicant’s domain-name registry operator and registrar services be targeted?
- Does the applicant intend to register domain names for others using the gTLD identified by the applied-for mark and will there be any restrictions on to whom it will be available?
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.
If the applicant fails to indicate for the record that the applicant’s domain-name registry operator and registrar services are, or will be, primarily for the benefit of others, the examining attorney must refuse registration pursuant to §§1, 2, 3, and 45 of the Trademark Act, 15 U.S.C. §§1051-1053, 1127. See TMEP §1301.01(a)(ii).
1215.02(e) Section 1(b) 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. Generally, in an intent-to-use application filed under §1(b) of the Trademark Act, a mark that includes a domain name will not be refused on this ground until the applicant has submitted specimen(s) of use and an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d)). The specimen provides a better record upon which to determine the registrability of the mark. 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 specimen, 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 USPTO is not precluded from refusing registration on this basis.
1215.02(f) Section 44 and §66(a) Applications
If the record indicates that the proposed mark would be perceived as merely an informational indication of the domain name address used to access a website rather than an indicator of source, the examining attorney must refuse registration in an application under §44 or §66(a) of the Trademark Act, on the ground that the subject matter does not function as a mark. The statutory bases for the refusals are §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, for trademarks; and §§1, 2, 3, and 45, 15 U.S.C. §§1051, 1052, 1053, and 1127, for service marks.
1215.03 Surnames
If a mark is composed of a surname and a non-source-identifying gTLD, 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), absent a showing of acquired distinctiveness under Trademark Act §2(f), 15 U.S.C. §1052(f). If the gTLD has no trademark significance, and the primary significance of a term is that of a surname, adding the gTLD 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. for cigars held primarily merely a surname); In re Hamilton Pharms. 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 for restaurant services held primarily merely a surname where "brasserie" is a generic term for applicant’s restaurant services). See also TMEP §1211.01(b)(vi) regarding surnames combined with additional wording.
1215.04 Descriptiveness
If a proposed mark is composed of a merely descriptive term(s) combined with a non-source-identifying gTLD, in general, the examining attorney must 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.
The gTLD will be perceived as part of an Internet address, and typically does not add source-identifying significance to the composite mark. In re 1800Mattress.com IP LLC, 586 F.3d 1359, 92 USPQ2d 1682 (Fed. Cir. 2009) (MATTRESS.COM generic for "online retail store services in the field of mattresses, beds, and bedding"); In re Hotels.com, L.P., 573 F.3d 1300, 91 USPQ2d 1532 (Fed. Cir. 2009) (HOTELS.COM generic for "providing information for others about temporary lodging; travel agency services, namely, making reservations and bookings for temporary lodging for others by means of telephone and the global computer network"); In re Reed Elsevier Props. Inc., 482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir. 2007) (LAWYERS.COM generic for "providing access to an online interactive database featuring information exchange in the fields of law, lawyers, legal news, and legal services"); In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004) (PATENTS.COM merely descriptive of "computer software for managing a database of records and for tracking the status of the records by means of the Internet"); In re DNI Holdings Ltd., 77 USPQ2d 1435 (TTAB 2005) (SPORTSBETTING.COM generic for "provision of casino games on and through a global computer network wherein there are no actual monetary wagers; provision of contests and sweepstakes on and through a global computer network; providing a web site on and through a global computer network featuring information in the fields of gaming, athletic competition and entertainment"); In re Eddie Z’s Blinds and Drapery, Inc., 74 USPQ2d 1037 (TTAB 2005) (BLINDSANDDRAPERY.COM generic for retail store services featuring blinds, draperies, and other wall coverings, sold via the Internet); In re Microsoft Corp., 68 USPQ2d 1195 (TTAB 2003) (OFFICE.NET merely descriptive of various computer software and hardware products); In re CyberFinancial.Net, Inc., 65 USPQ2d 1789 (TTAB 2002) (BONDS.COM generic for providing information regarding financial products and services and electronic commerce services rendered via the Internet); In re Martin Container, Inc., 65 USPQ2d 1058 (TTAB 2002) (CONTAINER.COM generic for "retail store services and retail services offered via telephone featuring metal shipping containers" and "rental of metal shipping containers").
However, there is no bright-line, per se rule that the addition of a non-source-identifying gTLD to an otherwise descriptive mark will never under any circumstances operate to create a registrable mark. The Federal Circuit has cautioned that in rare, exceptional circumstances, a term that is not distinctive by itself may acquire some additional meaning from the addition of a gTLD such as ".com" or ".net." In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005) (STEELBUILDING.COM highly descriptive, but not generic, for "computerized on-line retail services in the field of pre-engineered metal buildings and roofing systems," noting that "the addition of the TLD can show Internet-related distinctiveness, intimating some ‘Internet feature’ of the item.") (citing Oppedahl & Larson, 373 F.3d at 1175-1176, 71 USPQ2d at 1373).
Thus, when examining domain name marks, it is important to evaluate the commercial impression of the mark as a whole to determine whether the composite mark conveys any distinctive source-identifying impression apart from its individual components. The examining attorney must introduce evidence as to the significance of the individual components, including the gTLD, but must also consider the significance of the composite term (e.g., "Sportsbetting" in the mark SPORTSBETTING.COM) to determine whether the addition of the TLD has resulted in a mark that conveys a source-identifying impression.
See also TMEP §§1209.03(m), 1215.02(d)─1215.02(d)(iv), and 1215.05.
1215.05 Generic Refusals
Generally, a mark comprised of a generic term(s) combined with a non-source-identifying gTLD is generic and without trademark or service mark significance. In re 1800Mattress.com IP LLC, 586 F.3d 1359, 92 USPQ2d 1682 (Fed. Cir. 2009) (MATTRESS.COM generic for "online retail store services in the field of mattresses, beds, and bedding"); In re Hotels.com, L.P., 573 F.3d 1300, 91 USPQ2d 1532 (Fed. Cir. 2009) (HOTELS.COM generic for "providing information for others about temporary lodging; travel agency services, namely, making reservations and bookings for temporary lodging for others by means of telephone and the global computer network").
The Federal Circuit has noted that "[o]nly in rare instances will the addition of a [top level domain] indicator to a descriptive term operate to create a distinctive mark." 1800Mattress.com, 586 F.3d at 1364, 92 USPQ2d at 1685. However, there is no per se rule that the addition of a non-source-identifying gTLD to an otherwise generic term can never under any circumstances operate to create a registrable mark. The Court has held that in rare, exceptional circumstances, a term that is not distinctive by itself may acquire some additional meaning from the addition of a gTLD such as ".com" or ".net" that will render it "sufficiently distinctive for trademark registration." In re Steelbuilding.com, 415 F.3d 1293, 1299, 75 USPQ2d 1420, 1423 (Fed. Cir. 2005) (citing In re Oppedahl & Larson LLP, 373 F.3d 1171, 1177, 71 USPQ2d 1370, 1373 (Fed. Cir. 2004)). In Steelbuilding, vacating the Board’s determination that STEELBUILDING.COM was generic for "computerized on-line retail services in the field of pre-engineered metal buildings and roofing systems," the Court criticized the Board for considering STEELBUILDING and .COM separately, holding that "[i]n this unusual case, the addition of the TLD indicator expanded the meaning of the mark to include goods and services beyond the mere sale of steel buildings. Specifically, the TLD expanded the mark to include internet services that include ‘building’ or designing steel structures on the web site and then calculating an appropriate price before ordering the unique structure." 415 F.3d at 1299, 75 USPQ2d at 1423. The Court also criticized the Board for relying on evidence that "steel building" or "steel buildings" is generic, where there was an alternative meaning of the composite term STEELBUILDING as denoting the act of building steel structures. Id. at 1298, 75 USPQ2d at 1422. However, the Court held that the term STEELBULDING.COM was highly descriptive and unregistrable on the Principal Register under §2(e)(1), absent "a concomitantly high level of secondary meaning." Id. at 1301, 75 USPQ2d at 1424.
Thus, to establish that a mark comprising a generic term with a non-source-identifying gTLD is generic, the examining attorney must show that the relevant public would understand the mark as a whole to have generic significance. See 1800Mattress.com, 586 F.3d at 1363, 92 USPQ2d at 1684 (Board properly concluded MATTRESS.COM is generic for "online retail store services in the field of mattresses, beds, and bedding," where the Board considered each of the constituent words, "mattress" and ".com" and determined that they were both generic, then considered the mark as a whole and determined that the combination added no new meaning, relying on the prevalence of the term "mattress.com" in the website addresses of several online mattress retailers who provide the same services as the applicant); Hotels.com, 573 F.3d at 1303, 91 USPQ2d at 1535 (HOTELS.COM generic for "providing information for others about temporary lodging; travel agency services, namely, making reservations and bookings for temporary lodging for others by means of telephone and the global computer network," based on various definitions of "hotel," printouts from hotel reservation search websites showing "hotels" as the equivalent of or included within "temporary lodging," as well as evidence from applicant’s website); In re Reed Elsevier Props. Inc., 482 F.3d 1376, 1379-80, 82 USPQ2d 1378, 1380-81 (Fed. Cir. 2007) (LAWYERS.COM generic for "providing access to an online interactive database featuring information exchange in the fields of law, lawyers, legal news, and legal services," where the record included pages from applicant’s website showing that applicant’s services include providing information about lawyers and assistance in selecting a lawyer, and pages from eight other websites containing "lawyer.com" or "lawyers.com"); In re DNI Holdings Ltd., 77 USPQ2d 1435, 1439-41 (TTAB 2005) (SPORTSBETTING.COM generic for "provision of casino games on and through a global computer network wherein there are no actual monetary wagers; provision of contests and sweepstakes on and through a global computer network; . . . providing a website on and through a global computer network featuring information in the fields of gaming, athletic competition and entertainment," based on evidence of multiple examples of use of the terms "sports betting" and "sportsbetting," by both applicant and its competitors, to refer to both sports wagering and providing information about sports wagering, and there was no indication of a realistic alternative connotation of the compound term). See also In re Eddie Z’s Blinds and Drapery, Inc., 74 USPQ2d 1037 (TTAB 2005) (BLINDSANDDRAPERY.COM generic for retail store services featuring blinds, draperies, and other wall coverings, sold via the Internet); In re CyberFinancial.Net, Inc., 65 USPQ2d 1789 (TTAB 2002) (BONDS.COM generic for providing information regarding financial products and services and electronic commerce services rendered via the Internet, where bonds was the name of one of the financial products offered under the mark); In re Martin Container, Inc., 65 USPQ2d 1058 (TTAB 2002) (CONTAINER.COM generic for "retail store services and retail services offered via telephone featuring metal shipping containers" and "rental of metal shipping containers").
It is not necessary to show that the relevant public uses the term to refer to the genus. The correct inquiry is whether the relevant public would understand the term to be generic. 1800Mattress.com, 586 F.3d at 1364, 92 USPQ2d at 1685.
Marks comprised of generic terms combined with non-source-identifying gTLDs are not eligible for registration on the Supplemental Register under Trademark Act §23, 15 U.S.C. §1091, 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. However, 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 a claim of acquired distinctiveness, the examining attorney must issue a refusal on the ground that the mark is merely descriptive of the goods or services under §2(e)(1), 15 U.S.C. §1052(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. See TMEP §§1209.02–1209.02(b) .
See TMEP §1209.01(c)(i) regarding the test for establishing that a term is generic. See also TMEP §§1209.03(m), 1215.02(d)─1215.02(d)(iv), and 1215.04.
1215.06 Marks Containing Geographical Matter
The examining attorney should examine marks containing geographic matter along with a gTLD in the same manner that any mark containing geographic matter is examined. See generally TMEP §§1210–1210.10. 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), primarily geographically deceptively misdescriptive under §2(e)(3) of the Trademark Act, 15 U.S.C. §1052(e)(3), deceptive under §2(a) of the Trademark Act, 15 U.S.C. §1052(a), and/or merely descriptive or deceptively misdescriptive under §2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1).
When a geographic term is used as a mark for services that are provided on the Internet, the geographic term sometimes 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 must refuse registration under §2(e)(1) because the mark is merely descriptive of the services. See TMEP §1210.02(b)(iii).
1215.07 Disclaimers
Trademark Act §6(a), 15 U.S.C. §1056(a), provides for the disclaimer of "an unregistrable component of a mark otherwise registrable." The guidelines on disclaimer discussed in TMEP §§1213–1213.11 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 non-source-identifying gTLD), disclaimer is required.
If a disclaimer is required and the domain name includes a misspelled or telescoped word, the correct spelling must be disclaimed. See TMEP §§1213.05(a)(i) and 1213.08(c).
A compound term composed of arbitrary or suggestive matter combined with a "dot" and a non-source-identifying gTLD is considered unitary, and, therefore, no disclaimer of the gTLD is required. See examples below and TMEP §§1213.05–1213.05(g)(iv) regarding unitary marks.
| Mark | Disclaimer |
|---|---|
| ABC BANK.COM | BANK.COM |
| ABC FEDERALBANK.COM | FEDERAL BANK.COM |
| ABC GROCERI STOR.COM | GROCERY STORE.COM |
| ABC.COM | no disclaimer |
| ABC.BANK.COM | no disclaimer |
| ABCBANK.COM | no disclaimer |
1215.08 Material Alteration
Amendments may not be made to the drawing of the mark if the character of the mark is materially altered. 37 C.F.R. §2.72. In determining whether an amendment is a material alteration, the controlling question is always whether the new and old forms of the mark create essentially the same commercial impression. See TMEP §§807.14–807.14(f) regarding further information about material alteration. In re Yale Sportswear Corp., 88 USPQ2d 1121 (TTAB 2008) ( mark on the specimen (UPPER 90°) not a substantially exact representation of the mark on the drawing (UPPER 90); In re Innovative Cos., LLC, 88 USPQ2d 1095 (TTAB 2008) ( proposed amendment of the drawing from FREEDOMSTONE to FREEDOM STONE not material alteration of the mark); Paris Glove of Can., LTD, v. SBC/Sporto Corp., 84 USPQ2d 1856, 1862 (TTAB 2007) (in an application to renew a registration, the old and new specimens (AQUA STOP and AQUASTOP, both stylized) were deemed to be substantially the same because "mere changes in background or styling, or modernization, are not ordinarily considered to be material changes in the mark.").
1215.08(a) Adding or Deleting TLDs in Domain Name Marks
Generally, an applicant may add or delete a non-source-identifying gTLD to/from the drawing of a domain name mark (e.g., COOPER amended to COPPER.COM, or COOPER.COM amended to COOPER) without materially altering the mark. Although a mark that includes a gTLD generally will be perceived by the public as a domain name, while a mark without a gTLD will not, if the gTLD merely indicates the type of entity using the domain name, the essence of the mark is created by the second-level domain name, not the gTLD. Thus, the commercial impression created by the second-level domain name usually remains the same whether the non-source-identifying gTLD is present or not. If the gTLD does function as a source indicator, its deletion from the domain name mark may constitute a material alteration of the mark.
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.
Example: Amending a mark from ABC.PETER to ABC would materially change the mark because the essence of the original mark is created by both the second-level domain and the gTLD.
Similarly, substituting one non-source-identifying gTLD 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 ABC.ORG to ABC.COM would not materially change the mark because the essence of both marks is still ABC.
Example: Amending a mark from ABC.COM to ABC.PETER would materially change the mark because the essence of the original mark was ABC and the proposed mark now includes a source-identifying gTLD.
1215.08(b) Adding or Deleting gTLDs in Other Marks
If a mark that is not used as an Internet domain name includes a gTLD, adding or deleting the gTLD may be a material alteration.
Example: Deleting the term .COM from the mark ".COM ☼" used on sports magazines would materially change the mark.
1215.08(c) Adding or Deleting "." in Marks for Domain Name Registry Operator or Registrar Services
When used in connection with domain name registry operator or registrar services, wording immediately preceded by a dot (".") will likely be viewed by consumers as a gTLD. On the other hand, the same wording, used in connection with the same services, but shown without the "." would not give the impression of a gTLD and could be viewed as an indicator of source, such that the commercial impression created by the marks materially differs. Thus, the "." in this context does not constitute the type of "extraneous, nondistinctive punctuation" discussed in TMEP §807.12(a)(i).
Accordingly, an applicant may not amend an application to add a "." before wording in a mark for which the identification of services encompasses domain name registry operator or registrar services. Nor may an applicant amend a drawing to delete a "." from the beginning of wording in a mark in these instances.
Example: Amending an applied-for mark from TMARKIE to .TMARKIE would materially change the commercial impression of the mark from that of a source-indicating mark to that of a gTLD.
1215.09 Likelihood of Confusion
When 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 a non-source-identifying gTLD portion of the mark. Apple Computer v. TVNET.net, Inc., 90 USPQ2d 1393 (TTAB 2007). See TMEP §1207.01(b)(iii).
1215.10 Marks Containing the Phonetic Equivalent of a Generic Top-Level Domain
Marks that contain the phonetic equivalent of a non-source-identifying gTLD (e.g., ABC DOTCOM) are treated in the same manner as marks composed of the gTLD itself. If a disclaimer is necessary, the disclaimer must be in the form of the gTLD and not the phonetic equivalent. See TMEP §1213.08(c) regarding disclaimer of misspelled words.
Example: The mark is INEXPENSIVE RESTAURANTS DOT COM for providing information about restaurants by means of a global computer network. Registration must be refused because the mark is merely descriptive of the services under 15 U.S.C. §1052(e)(1).
Example: The mark is ABC DOTCOM. The applicant must disclaim the gTLD ".COM" rather than the phonetic equivalent "DOTCOM."