USPTO wising up to new TLD frontrunning
Monday, January 23rd, 2012
Cancels two approvals, more to come?
The U.S. Patent and Trademark Office is finally catching on to a game I’ve reported about many times: trying to sneak through a trademark on a top level domain name.
The USPTO has a policy of not issuing trademarks for top level domain names. But that hasn’t stopped people from trying to get one, which may give them some negotiating or legal power for TLDs.
One common trick is to use a Wild West Domains domain reseller account as proof of using .whatever in commerce.
These applications often also say the goods and services covered are domain registration services, rather than registry services.
But last week the USPTO “took back” the registration (albeit on the supplemental register) for .bank as well as for .secure. In a letter to the applicant, the USPTO wrote:
The imminent expansion of available generic TLDs underscores the consumer perception that TLDs used in connection with domain name registration services should be perceived as TLDs rather than as source indicators.
This is a great start. Now may I recommend that the USPTO look into several other curious trademark applications?
Further Reading:
Someone in the Commissioner’s office got the memo.
Now it’s time to do away with the ‘dot’ trademarks. ‘.vegas’ and ‘dotvegas’ are synonymous. End users will understand it is a top level domain.
You can’t get a TM on any phrase unless you’ve had it in the public eye, as a productive service, for five years within your “country” – although it normally extends worldwide. The paperwork with the USPTO is just the final completion of the five year usage of your name. I’m not an atty, so I recommend everyone contact a TM atty for all the legal qualitifications.
However, my policy on listing any domain I own, immediately upon a site buildout (which is why I love Whypark, now “DomainApps.com”). This shows you are monetizing the name, places your name on a global visibility, and gives cause to any corporation wanting to “reverse hijack” it.
My non legal opinion and from experience, It’s a strong strategic move, and gives you a foundation to hold on to your domain.
@ Stephen Douglas -
That’s not true. You can file a trademark anytime. You can even file an “intent to use” trademark before you even start using it in commerce.
@Andrew,
Yes, you can “file”, but it means nothing unless you meet the requirements. You can read my full response to your comment here:
http://www.successclick.com
Thanks for making me post an article I hadn’t planned on doing.
Stephen,
The USPTO’s official timeline gets you a registered trademark within as little as 7 months.
http://www.uspto.gov/trademarks/process/tm_sec1atimeline.jsp
Yes, you have to use your mark. But the idea you have to wait 5 years is simply not true.