I’ve made plenty of commotion about companies filing for trademarks on future top level domain names. It always seems that they’re successfully pulling a fast one on the U.S. Patent and Trademark Office.
But after an exhaustive analysis of 115 trademark applications, I’ve actually found that the U.S.P.T.O. is mostly on top of things when it comes to this trademarking game.
In almost all cases, the trademark examiner has sent an office action to the applicant questioning if the use is for top level domain names.
There’s only one case where it looks like the examiner dropped the ball: .ping. Karsten Manufacturing (PING Golf) applied for this domain and said it was for registry services. Yet it’s proceeding to publication with no office action. [Update 1/27/12: the USPTO has just sent an office action to Karsten.]
Another brand is having more trouble. Schott AG wants to trademark .schott and is clear in its application that it’s for a top level domain. It was refused. Schott is drawing comparison to other trademarks, and the response to the company is a good explanation of exceptions:
The applicant argues that the applicant’s mark should be registered on the Principal Register because the marks DOTVEGAS and .NUDOMAIN were registered by the Office. However, the DOTVEGAS mark is not being used as a top-level domain name extension based on the specimen of record. With respect to the .NUDOMAIN mark, this mark was registered in February, 2005. The Office’s policy with respect to the registrability of top-level domain name extension has changed since 2005. Thus, the existence of this mark on the Principal Register is irrelevant with respect to the case at hand.
Below is a list of 115 trademark applications potentially related to new top level domains.
– The “status” column shows the current status of the application. Pending typically means it’s still undergoing initial review. Note that most responses have brought up the issue of not granting trademarks for top level domains.
– This probably isn’t an exhaustive list. Some of the trickier applications don’t mention “domains” at all in their class of service, as with a series of five applications from theDot Communications Network to trademark .music.
– If a mark is listed twice for the same applicant, that means the applicant filed twice under different classes of service.
– These are just U.S. trademarks. Some companies have been granted TLD trademarks by other countries.