Impact of New gTLD Launch Expands to US Patent & Trademark Office

With the impending launch of up to 1,400 new generic top level domains (gTLDs) in the coming months, trademark owners are scrambling to decide how to protect their brands from online infringement, and, on the other hand, how to leverage their intellectual property assets in this new online space. Many major companies like Nike and McDonald’s Corporation have applied to operate new gTLDs based on their brand names (i.e., .NIKE and .MCDONALDS). Unlike registering a domain name, creating a new gTLD means the owner is operating an online registry (like .com or .info). So long as the registry is “open,” third parties can register domain names in the new gTLD. Thus, private companies will be offering domain name registration and registry services to third parties. With this new landscape in mind, the U.S. Patent & Trademark Office (USPTO) has decided to rethink its policy about registering gTLDs as trademarks. If the policy change goes through, new gTLD applicants will have to decide whether they also want to file a new trademark application covering their domain name registry and registration services.

The USPTO previously refused to register marks that were “comprised solely of a TLD for ‘domain name registry services’” because these gTLDs did not serve a source identifying function. For example, consumers do not assume all .COM domain names come from the same source. Rather, they think .COM domains come from commercial entities generally. With the new gTLD launch, however, there is now a chance that a gTLD could serve a source identifying/trademark function. The USPTO has acknowledged that when a gTLD serves a source identifying function, a trademark registration would be warranted. In order to distinguish between new gTLDs that are worthy of trademark protection and those that are not, the USPTO has proposed a new policy for evaluating trademark applications for marks comprised of gTLDs and covering “domain name registration or registry services.”

To be eligible for trademark registration, the applicant must first show that its applied-for mark will serve a source identifying function. To satisfy this requirement, the applicant must show that it owns one or more valid U.S. registrations for the mark that are in use in the U.S. However, the lack of a “.” or “dot” in the prior U.S. registration is not determinative (thus, Nike could submit a prior registration for NIKE, DOT NIKE, or .NIKE). The applicant must also limit the identification of services in its new trademark application to match its existing registration(s). According to the policy, if the applicant has a valid registration for “automobiles,” the new trademark application must cover “domain name registration services for websites featuring automobiles;” it cannot cover a different field like “shoes” or “houses.”  The applicant must also provide substantial evidence showing that the mark will be viewed as a trademark, such as advertising figures showing that the public views the gTLD as a trademark. Next, applicants can only apply for a trademark if they have a valid Registry Agreement with ICANN to operate a new gTLD. Finally, the gTLD must be used primarily to benefit third parties, not the applicant. Thus, applicants who offer so-called “closed” registries where only the applicant’s employees can register domain names would not be eligible for a corresponding trademark registration. Assuming an applicant can fulfill all of these new gTLD-specific requirements, they would also need to satisfy the existing standards for trademark registration (e.g. there must not be a likelihood of confusion with a prior mark).

While it is promising to see the USPTO adapt to the changing online environment, the actual impact of the policy change is likely to be relatively minor. For example, the pool of possible applicants is limited to those companies with valid Registry Agreements with ICANN. Next, applicants must jump through a number of hoops to qualify for trademark registration, including submitting substantial evidence that the gTLD will serve a source identifying function. Finally, the new application would only cover domain name registration and registry services that are related to the field in which the applicant already has a valid U.S. registration. Thus, since Nike already owns a trademark registration covering shoes, the benefit of securing a second registration for domain name registration and registry services for websites featuring shoes appears to be quite minor.

The public comment period for the new USPTO policy has closed. It remains to be seen if the USPTO will amend the policy to address concerns from the public, and if trademark owners will take advantage of the change in policy by applying for gTLD-related trademarks.