Company that filed .secure trademark application appeals USPTO ruling.

The Wisconsin company that wants to trademark .secure hasn’t given up yet.

I first wrote about Asif LLC in 2010 when it filed a trademark application for .secure. It also filed an application to trademark .bank.

The application was originally filed on an intent-to-use basis. Later, Asif said it was using the term in commerce for “domain registration services”. How was it doing that in 2011, before new TLD applications were even being accepted? It based its claim on offering domain registrations as a Go Daddy reseller.

It actually managed to briefly register the .secure and .bank trademarks, albeit on the supplemental register.

But the U.S. Patent and Trademark Office has a longstanding policy of not granting trademarks that are for top level domains. After noticing its mistake, the USPTO invalidated the registrations.

The application period for new TLDs has come and passed. Two* companies – Amazon.com and Artemis Internet Inc. – applied for .secure. Asif, which later changed its name to Domain Security Company LLC, did not.

Yet on May 3, Asif filed an appeal over the USPTO’s decision that .secure fails to function as a service mark. It is arguing that the USPTO must be able to grant trademark protection to top level domains.

Asif’s founder Mary Iqbal previously argued that the inability to trademark a top level domain gave an advantage to deep-pocket companies:

Furthermore, as a result of the lack of trademark protection for Top Level Domains, businesses competing for strings like .SAS may be forced to contend against each other financially, to bid against each other, for the right to have protection for the term .SAS for Registry Services. This means that applicants with access to greater funding resources have an advantage over those with less access to funding.

So Asif’s proof of use in commerce is that it allows registrations of .com, .net, etc. domains at a Go Daddy reseller. Yet it wants trademark protection for .secure as a top level domain…and it didn’t apply for the domain.

Confused? So am I.

* Note: the original version of this article mentioned that three companies, Symantec, Defender Security Company, and Donuts, applied for .secure. They applied for .security, not .secure.

Three of the largest applicants for new TLDs are facing a mountain of objections.

Donuts, Amazon, and Google have the dubious honor of having the most objected-to applications for new top level domains.

There were 263 formal objections to new top level domains, and that doesn’t include GAC advice.

Donuts received 55 objections covering 45 unique objections, which means about one out of seven of its 307 applications are facing an objection.

24 of Donuts’ objections are community objections. Groups purporting to represent the gold, band, and ski, among other “communities”, decided to fight the company.

Amazon received 24 objections on 18 unique applications. Half of the 24 objections are community objections, thanks in part of the company’s plans to keep its TLDs closed.

Google, which applied for more domains than Amazon, was hit with 22 objections on 18 unique objections. 9 are community objections and 7 are legal rights objections.

The “our competitors ganged up on us” winner is Fidelity, which applied for only four top level domains but managed to receive 11 objections. Only its .Fidelity application wasn’t objected to. Its .IRA, .MutualFunds, and .Retirement applications received multiple objections from a combination of TIAA-CREF, Charles Schwab, TD Ameritrade, and Prudential.

The spreadsheet below lists each objection and “decodes” subsidiaries to show applicants such as Donuts. It is sorted by applicant.

Seriously, WTF?

International Chamber of Commerce has posted more community and limited public interest objections on its web site.

On the surface, these look to be quite misdirected.

Afilias’ application for .lotto has been hit with a community objection filed by European State Lotteries and Toto Association. That’s a group that represents lotteries and gambling companies in Europe that benefit the state.

Then there’s Accuweather’s community objection to The Weather Channel’s .weather. They already went public about this, but I’m still scratching my head. Unless the “community” is every living and breathing person in the world, I find this hard to understand.

Entertainment Software Association is objecting to both Amazon’s and Beijing Gamease Age Digital Technology Co.’s applications for .game on community grounds.

Fédération Internationale de Basketball (FIBA) has a community objection against dot Basketball Limited.

There’s also the WTF community objection to .gold.

On the Limited Public Interest side, Prudential has objected to Fidelity’s applications for .retirement and .mutualfunds.

Some of these objections are from company’s upset over competitors wanting to operate closed TLDs.

But seriously, WTF?

I can’t wait until .WTF gets an objection…I wouldn’t bet against it.

Google and Verisign file most objections (so far) against TLDs on string similarity grounds.

The International Centre for Dispute Resolution has published 33 of the string confusion objections it has received, representing about half of the total.

One of the biggest filers so far is Google, which has objected to at least 9 applications. All of the objections are against applications for the plural version of domains it has applied for.

ICANN’s String Similarity Panel (somewhat surprisingly) did not determine that a domain like .cars should be in contention with .car, which opened the door for companies to try to protect their singular or plural versions against domains off by a single “s” letter.

Google has objected to applications for .cars, .games, two for .kids, .homes, .pets, and .tours.

Plural vs. non-plural domains are sure to be one of the bigger areas of confusion when new TLDs find their way to the web.

The other big objector thus far is VeriSign, which is concerned about domains that may be similar to .com, .net, and .tv. It is objecting to .mnet, .bom, .nec (a brand application), .pet, .cam, .ecom, .company, .network, .vet, .dtv, .tvs, and .itv. The Centre has only published one of its objections against .now, so I suspect more are forthcoming.

SX Registry SA B.V., which runs the .sx country code, has objected to applications for .sex and .sexy.

The more domains that are “closed”, the less brand protection is required.

Last week I wrote about why I’m not concerned with companies registering generic terms as TLDs (e.g. .blog, .book) and keeping them “closed” to other parties for second level registrations.

Today I was reminded of another benefit to some of these domains being closed, and why I find it ironic that big brands are upset over closed TLDs.

Retail Council of Canada (RCC) sent a letter to ICANN stating its opposition to closed generic TLDs. It states:

“Given its mandate, RCC believes that these gTLD strings should be open and unrestricted sine generic words use in a generic way belong to everyone.”

Let’s quickly get over the fact that this statement is ridiculous (as I go try to protect my generic second level domains from the RCC).

Instead, focus on this irony:

For years, companies have been throwing a fit about the supposed number of defensive registrations they’d have to do at the second level of generic top level domains.

For example, a shoe company might feel compelled to register all of its brands under .shoes.

But if a top level domain is closed, that requirement goes away.

In the case of .shoes, Donuts has applied for the TLD. Shoe companies might feel compelled to register nike.shoes, air.shoes, etc.

Had Amazon applied for .shoes as a closed registry, those companies would no longer feel compelled to register the second level domains. In fact, they wouldn’t even be allowed to.

If a company was complaining about defensive registrations, they certainly shouldn’t complain about close generics. They should embrace them.

(I’ll note that I’m not familiar with RCC and if any of its member companies have complained about protecting their marks at the second level. But I’ll also note that the letter is worth a read because it has other funny comments. Consider this: “It will also effectively gain exclusive rights to be associated with the kind of products or services they offer, which is something that could not be achieved through tradmark laws in Canada”. The RCC is talking about TLDs, but they apparently don’t have a problem with Barnes and Noble owning book.com.)