Recently, many companies have begun filing for trademarks with the United States Patent and Trademark Office (USPTO) that are geared towards possible new top level domain names in hopes that it will give them a leg up in the upcoming application process with ICANN. What is surprising is that the new TLD process is still under debate with ICANN and applications for TLD’s are not even yet being accepted.
It’s reported that Top Level Domain Holdings, Ltd filed for trademarks of .movie, .kids, .books, .buy, .baby, .poker, .golf, and .casino. Two other companies, Colored Planet of Connecticut and a Canadian company, have both filed a trademark for the TLD .eco.
Attorney John Berryhill points out that top level domains can not be trademarked for Registry purposes, so it comes as no surprise that many are denied.
“If a mark is composed solely of a TLD for “domain name registry services” (e.g., the services 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 LEXIS 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.”
This doesn’t stop companies from applying for the trademarks though. The practice of filing for trademarks for TLD’s before they are launched is common and has been done frequently, often by changing their class of service slightly so that it will hopefully be overlooked by the examiner.
Even if it does slip through the cracks and a company becomes the owner of a trademark, it does not guarantee that said company will be awarded the Registry. Many simply apply for the trademarks to hopefully further their own applications with ICANN or to possibly hurt another company’s attempts at applying for the TLD. Additionally, some apply for the trademarks after a possible competitor has already done so simply to avoid future legal issues should their Registry application be approved.
At this point, the trademarks purely speculation as ICANN has not begun accepting applications for new TLD’s.