New Top Level Domain Trademark Frontrunning Battle Heats Up
Monday, April 12th, 2010
.Eco trademark fight heats up, but pot is calling the kettle black.
In June I wrote about how companies wanting to apply for new top level domain names were attempting to file trademarks on non-existent top level domain names.
One of the examples I gave was .eco. At the time, Colored Planet Connextion appeared close to getting a trademark approved. Canadian company Big Room also filed an application for the .eco mark.
While both of these groups want to launch a .eco top level domain name, neither of the applicants was Dot Eco, LLC, the group endorsed by Al Gore. Colored Planet’s trademark was later approved, and it decided to play hardball with Dot Eco, LLC. According to documents filed with the U.S. Patent and Trademark Office, Colored Planet sent a cease and desist letter to Fred Kreuger, a member of Dot Eco LLC.
To fight back, an attorney for Dot Eco, LLC filed a petition to cancel Colored Planet’s mark (pdf). The petition noted:
“…it is not possible to register a top level domain name as a trademark for domain name registry services…”
This is true. Under current USPTO policy, you can’t register a trademark for a top level domain name.
But the irony here is striking. Kreuger is CEO of Top Level Domain Holdings, which owns new top level domain consulting firm Minds + Machines. Top Level Domain Holdings has applied for a number of TLDs as trademarks, including .movie, .kids, .books, .buy, .baby, .poker, .golf, and .casino. The company is still working to get the trademarks approved. In January it changed and added classes of goods on the trademark applications.
If Top Level Domain Holdings is awarded any of these trademarks, then the company will achieve exactly what it says Colored Planet is trying to do:
“…a cloud will be placed on Petitioners’ right to use the term “.eco or dot eco” as the identifier for proposed gTLD registry services, and to galvanize support for this project.”