Domain Name Wire

Domain Name Wire

  • .Gay Trademark Application Filed

    1. BY - Jun 27, 2011
    2. Policy & Law
    3. 4 Comments

    Trademark frontrunning continues.

    A Washington man has filed an intent-to-use trademark application for “.gay” with the U.S. Patent and Trademark Office.

    Thomas Petersen DBA Creighton Investments, LLC filed the application on June 20 just after ICANN approved a plan to open up the top level domain name system.

    Petersen doesn’t seem to be connected to either of the two groups that have publicly announced plans to apply for the .gay top level domain name thus far.

    But the trademark application won’t get far. The U.S. Patent and Trademark Office doesn’t approve trademarks for top level domain names. Some applicants find ways to squirrel around the field of use to slip one past the examiner, but Petersen’s application is quite blunt:

    Internet Corporation for Assigned Names and Numbers extension for top level world wide web domain name extension for all domains ending in “.gay” to be first used in commerce upon provisioning by ICAAN. The mark will be used to promote, identify and market websites pertaining to the gay and lesbian population.

    …Trademark is asserted only for use as a Internet Corporation for Assigned Names and Numbers extension for top level world wide web domain name extension for all domains www.example.gay

    Petersen simultaneously filed a trademark application for .omni.

    This isn’t the first time someone has filed a trademark application for .gay. A Toronto company tried in 1997 but gave up the following year.

4 Comments
  • The trademarking of TLDs is an interesting topic. So far I know of two entities that have actually secured the ‘dot’ version of a tld – ‘dotfamily’ and ‘dotvegas’ have both been registered successfully by potential applicants for tlds. My question is, how can and will they be enforced? For example, if the registry owns the trademark for ‘dotvegas’ and licenses its use to only its registrar, how is that not anti competitive? Could a trademark use suit against a reseller or registrar be countered with an anti trust claim?

    Another issue I have is, should they be able to register it at all? You cannot register a trademark for ‘maple leaf’ for the use of marketing maple leaves, because maple leaves exist as a matter of natural course. Should you be able to put a ‘dot’ in front of a dictionary word and trademark it for domain sales? If dotanything was always part of ICANN’s mission, then aren’t generic words, with a ‘dot’ in front also just a matter of natural course of events?

  • Tom,

    TM law in the US is a complete joke. Basically the only thing that matters is how much money you have and if your corporation is big enough.

    The Maple Leafs are a hockey team in Toronto. Potentially if they filed their claim right they could easily take mapleleafs.com (if they didn’t already own it.) The UDRP panel has cited bad faith could be anything from not using a domain to not using it enough. They have CONFLICTING verdicts throughout their history of rulings. Not only that, but they have a conflict of interest between the party that is paying and the defendant.

    Like I said, US TM law is a joke.

  • This TM game is BS. It is like filing a TM for a single letter .COM. Something that does not exist.

    You can file any TM you want, but is it enforceable?

    This is a major legal issue to address, and a major reason we will probably not see competitive generic terms for many years.

    Brad

  • .gay should never be registered as trademark. It’s getting out of hand. It’ too much!

    If it’s approved, everyone can register .com .net .co .sex .business .nyc .trademark .porn .suck .con .cum as trademarks.

    It’s outrageous. So stupid ideas.

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