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 registry operator and domain name 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 registry operator or domain name 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 registry operator or domain name 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 Registry Operator and Domain Name Registrar Services
Background. A "registry operator" maintains the master database of all domain names registered in each top-level domain (TLD), and also generates the "zone file," which allows computers to route Internet traffic to and from TLDs 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 known as the "registry." The terms "registry operator" and "registrar" refer to distinct activities 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 TLD. See Internet Corporation for Assigned Names and Numbers (ICANN), Glossary, https://www.icann.org/en/icann-acronyms-and-terms?nav-letter=a&page=1 (accessed Sept. 1, 2021).
Failure to function refusal. A mark composed solely of a generic TLD (gTLD) for domain registry operator or domain name registrar services typically fails to function as a mark because consumers are predisposed to perceive gTLDs as merely a portion of a web address rather than as an indicator of the source of domain registry operator and domain name registrar services. In re Vox Populi Registry Ltd., 2020 USPQ2d 11289, at *4 (TTAB 2020) (citing In re AC Webconnecting Holding B.V., 2020 USPQ2d 11048, at *3-4 (TTAB 2020)), aff'd, 25 F.4th 1348, 2022 USPQ2d 115 (Fed. Cir. 2022); see TMEP §1215.02. For any proposed mark, including a gTLD, the determination of whether the designation functions as a mark hinges on consumer perception. In re Vox Populi Registry Ltd., 2020 USPQ2d 11289, at *4 (quoting In re AC Webconnecting Holding B.V., 2020 USPQ2d 11048, at *3), aff'd, 25 F.4th 1348, 2022 USPQ2d 115 (Fed. Cir. 2022). Therefore, registration on the Principal Register of such proposed 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 does not function as a mark to identify and distinguish the source of the services because it would not be perceived as a mark. TMEP §1301.02(a). For applications on the Supplemental Register, the refusal must be made under Trademark Act §§23(c) and 45, 15 U.S.C §§1091(c), 1127.
Including stylization in a gTLD does not render it registrable on the Principal Register unless the stylization creates a commercial impression separate and apart from the impression made by the wording itself. In re Vox Populi Registry Ltd., 2020 USPQ2d 11289, at *8 (comparing In re Cordua Rests., Inc., 823 F.3d 594, 606, 118 USPQ2d 1632, 1638-39 (Fed. Cir. 2016) (affirming Board’s holding that the mark was generic and the stylization "[did] not create a separate commercial impression over and above that made by the generic term")), aff'd, 25 F.4th 1348, 2022 USPQ2d 115 (Fed. Cir. 2022). In addition, a "completely ordinary and nondistinctive" stylized display of a gTLD does not render it registrable on the Supplemental Register. In re AC Webconnecting Holding B.V., 2020 USPQ2d 11048, at *13-14 (citing In re Anchor Hocking Corp., 223 USPQ 85, 88 (TTAB 1984)). See TMEP §1209.03(w) regarding stylization of descriptive or generic wording.
Response options. The applicant may, in some circumstances, avoid or overcome the refusal by providing evidence that the mark will be perceived by consumers as a source identifier. In addition to such evidence, the applicant must show that: (1) 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 and (2) the identified services will be primarily for the benefit of others.
Descriptiveness refusal. If the gTLD merely describes the subject or user of the domain space, the examining attorney must also refuse registration 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. See TMEP §§1209-1209.03(w) regarding refusals based on descriptiveness.
1215.02(d)(i) Prior Registration(s) of the Same Mark for Goods or Services in the Same Field of Use
Relevant evidence that the gTLD shown in the mark may be perceived as a source identifier includes evidence that the gTLD 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 registry operator and domain name registrar services. Applicants seeking to demonstrate that a gTLD functions as a mark by relying on prior U.S. registration(s) must establish:
- (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 registry operator and domain name 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," the services in the application may be identified as "domain name registrar services for websites featuring automobiles." However, the applicant may not identify its services as, for example, "domain name registrar services for websites featuring restaurants" or merely as "domain name registrar services."
If the applicant does not specify a field of use for the identified domain registry operator and domain name 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 registry operator and domain name 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 registry operator and domain name 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 registry operator and domain name 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 registry operator and domain name 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 registry operator and domain name 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 registry operator and domain name 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 registry operator and domain name 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).
The USPTO’s Acceptable Identification of Goods and Services Manual (ID Manual) includes "domain registry operator services" in International Class 42 and "domain name registrar services" in International Class 45 for use by those entities with valid Registry Agreements or current accreditation as a registrar by ICANN.
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.