Monday, May 6th, 2013
Company that filed .secure trademark application appeals USPTO ruling.
The Wisconsin company that wants to trademark .secure hasn’t given up yet.
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.