Trademark office questions use in commerce of .music logo.
Constantine Roussos has made it clear that he plans to use international trademarks to help him win the .music top level domain name during the application process.
But the U.S. Patent and Trademark Office isn’t playing a long.
On December 31 Roussos filed a trademark application for a .music logo. The U.S. Patent and Trademark Office wrote back saying there were two problems:
1. The mark hasn’t been used in commerce “in connection with the identified services as of the filing date of the application.” In other words, Roussos has used the logo but not for the goods and services identified since no one can actually register .music domain names right now.
2. The application must disclaim the descriptive wording “.MUSICâ€. Filing a design trademark that includes .music may be a clever way to claim rights to .music, but the USPTO isn’t hearing it.
Roussos isn’t the only one filing trademarks on top level domain names before the application window even opens. I think this will be one of the messy areas during the application process.
Roussos’ .music campaign has its first announced competitor. I expect there to be more.
I am aware of two prospective gTLD trademarks have been successfully registered – ‘dotfamily’ and ‘dotvegas’ wordmarks.
I have never understood the rationale behind this approach. How can you expect to claim “rights” to something that doesn’t even exist yet?
I blogged about this, but the answer to Menius’s question is you can file an intent to use application, and you have to later show an actual use. The biggest thing about this letter though, to me, is that some other company already filed .MUSIC trademarks back in 2008 (under that intent to use status). Looks like Mr. Roussos got beat to the punch, at least in the US.
You can certainly file an intent-to-use, but I have two problems with this:
1. If it is used as a way to block others from applying
2. USPTO guidelines forbid registering a TLD as a trademark
Hmm, I know I’ve seen some tms in the form of domain names. Of course it’d have to be a brand in some way not just a domain registration.
Here the nTLDs will be registrars for the domains so I don’t see any problem with a service mark for those businesses. I could be wrong though…
“Here the nTLDs will be registrars for the domains so I don’t see any problem with a service mark for those businesses. I could be wrong though…”
The problem, Bret is that a trade or service mark is something that is applied to one’s own goods/services to distinguish them from competitors.
The POINT of a TLD registry is to get OTHERS to use the TLD.
In other words, of what business is “.com” distinctive? The “g” in gTLD stands for generic, you know.
Image Online Design, Inc. v. Core Association, et al., 2000 U.S. Dist. Lexis 10259 (C.D. Ca., July 21, 2000)
I see your point, but I think there’s a difference between gTLDs as they stand and the nTLDs for which the contractees will operate as their own registry/registrar. I think we agree there’s probably not much of an issue with, for example, .zizzerargleblah registered as a service providing domain name registration of ____.zizzerargleblah domains to the public (or whoever it wants). But, I agree with you, if the nTLD is generic in nature, things get a little funky.
In the case of a nTLD, the point is to get others to use it, but no on else would be able to use or have the nTLD itself, by definition: there’s only one .music (no SLD) at the top, run by one person/company. So, even if a trademark is granted, what value does it really have? In the domain name space itself, probably not a whole lot, except MAYBE to help stop confusingly similar nTLDs from being registered (.musics, .musix, whatever) though presumably the approval process should stop that kind of stuff. Other than that, there’s no other providers of that service with respect to that domain extension, so the only point would be to … use it as a way to show that you’re a real, legitimate business operator, or use it to prevent people from putting your business name on t-shirts and selling them, whatever. I mean, the owner of .music isn’t going to enforce its trademark against SLD registrants – what would be the point? It’d be an absurd result.