One applicant for .sport TLD continues to try to get related trademarks.
I guess trademarks are just like any other sport — a big game.
dotSport LLC, which wants to run a .sport top level domain name, has been aggressive in its hunt for .sport related trademarks.
It just filed another application for registry.sport.
It filed the first one in January 2009 but it’s now abandoned. It filed another one in May 2010. In August 2010 the U.S. Patent and Trademark Office sent a notice that the mark was merely descriptive and classified incorrectly. dotSport had six months to respond.
Instead it appears the company filed a fresh trademark application for registry.sport on February 23 (serial number 85249217).
While the company struggles to get registry.sport through the system, it has had more success with life.sport. But this is where things get really interesting.
On its web site, dotSport says:
life.sport is a social network/digital media platform that enables monetization of every .sport domin (sic) name holder’s digitized media assets, merchandise and memorabilia to the benefit of that domain name registrant.
So in order to use life.sport “in commerce”, dotSport would need the .sport TLD, wouldn’t it? Accept the application window for new TLDs hasn’t even opened.
When an intent-to-use application is allowed by the USPTO you have six months to show use in commerce. You can ask for up to five extensions on this. Yet as new TLD delays mounted, dotSPORT found a clever way to show use in commerce.
For some of the classes of service dotSport filed for on life.sport you don’t need a TLD. But check out the proof of use in commerce submitted by dotSport on February 1 for one class:
Computer services, namely, hosting online web facilities for others for organizing and conducting online meetings, gatherings, and interactive discussions. The mark was first used by the applicant, or the applicant’s related company, licensee, or predecessor in interest at least as early as 04/28/2010, and first used in commerce at least as early as 04/28/2010, and is now in use in such commerce. The applicant is submitting one specimen for the class showing the mark as used in commerce on or in connection with any item in the class, consisting of a(n) screenshots from Company’s website page.
screenshots (pdf)
Interesting. It looks like a forum and social networking tool at lifedotsport.com.
Is this really being used in commerce? If you go to lifedotsport.com you get a password prompt. Don’t enter it and you get “Authorization Required”.
Tom Barrett says
It looks like they went ahead and launched their service using a dot-com. Nothing wrong with that.
Andrew Allemann says
Tom, except that they didn’t actually launch the service, as I point out in the story.
Nic says
This is one of the few areas where I think the US legal system (as compared to UK, Australia, EU) is BETTER.
In the US the principle is “first to use”.
In most other places, the principle is “first to register”. In other words, in UK/Australia, once you register, as long as you have genuine intent to use the mark when you apply/register, you have a monopoly on the name for five years (after which it is exposed to an application for removal ion the basis of non-use). In the US, you actually need to establish use first.
This can get very interesting in the context of UDRP.
Tom Barrett says
Andrew, what your article says is that you are not authorized to use the service. How can you tell they haven’t launched the service?
Andrew Allemann says
Tom, the site clearly isn’t active to the public, which would be a use in commerce.
BTW, what is Encirca’s connection to dotSport?
Tom Barrett says
Andrew,
We have zero connection to dotSport.
We are talking about what constitutes a “use in commerce” for a trademark. I can have an online service open to only 1 customer and it would qualify as a “use in commerce”. I do not need to make it open to the public, nor do I need to issue a press release that it even exists. The trademark office would accept a marketing flyer, even if it was distributed to a limited audience as proof of use.
And, of course, the domain name I choose is irrelevant in terms of proving use in commerce for the trademark.
Andrew Allemann says
Tom, was just asking because of the whois record for lifedotsport.com
Tom Barrett says
aaah. yes, we are the registrar. Not connected with the company though.
Andrew Allemann says
Tom, thanks for clarifying. Was just going by the whois info.
John Berryhill says
“I can have an online service open to only 1 customer and it would qualify as a “use in commerce”.”
Tom, look into the phrase “token use”.
A genuine use in commerce which, while indeed being a commercial use, is substantially a pretext for establishing commercial use for the purpose of trademark registration, is a non-qualifying “token use”.
T.M.E.P. § 901.02:
“The definition of use in commerce ( TMEP §901.01) was amended by the Trademark Law Revision Act of 1988 (TLRA), Public Law 100-667, 102 Stat. 3935, to add the phrase “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” The primary purpose of the amendment was to eliminate the practice of “token use,” or use made solely to reserve rights in a mark.”
Now, I haven’t looked into all of these various TLD trademark applications in detail, but there is a very strong aroma of various actors seeking to engage in just this sort of behavior.
Karen Bernstein says
John, not only that. Take a look at the attempts by .Mobi to get trademark rights. They were one of the first and see what happened to their applications. All abandoned! But if you to go to OHIM you might get rights. Then what?