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.