French lawyer with ICANN, NAF, and WIPO connections helps new TLD applicants file trademarks for prospective top level domains.
I’ve chronicled many of the attempts by new gTLD hopefuls to “frontrun” trademarks for new TLDs in the United States. Here are 115 examples.
But that’s just in the U.S. system. And it’s not a huge threat since the U.S. Patent and Trademark Office is rejecting these applications.
Yet there’s some trademarking activity in the European Union as well.
One of the prolific filers is Constantine Roussos, who is behind one of the .music initiatives.
Back in 2009 he successfully registered two stylized trademarks for dot music with the Trade Marks and Design Registrations Office of the European Union. He later tried to file a similar one in the U.S. but was rebuffed.
While ICANN doesn’t care about existing “dot” trademarks, it’s possible these trademarks will cause TLDs to get tied up in the courts.
In 2010 Roussos commented to ICANN:
Rest assured that if we, as .MUSIC are faced with the possibility of being gamed and abused in a manner that we find illegal, we will use our trademarks and other means necessary to do what we have to do to protect ourselves and our respective community. While trademarks alone should not be the sole determinant of earning a TLD, it is the only means we have of protection, since ICANN has not incorporated any mechanisms to prevent TLD applicant abuse, gaming and unfair piggybacking from other initiatives.
Now it’s not just .music Roussos is after. He has filed 21 additional applications since December 30. They all have stylized logos like these:
The graphical mark applications cover these domains:
.cool
.hot
.love
.doctor
.blog
.app
.lawyer
.attorney
.artist
.video
.movie
.tunes
.store
.song
.property
.online
.mus
.law
.home
.film
.fashion
French intellectual property law firm Dreyfus & Associes assisted Roussos with the applications. If the name of the firm rings a bell, that’s because the firm was founded by Nathalie Dreyfus. She’s a member of ICANN’s At-Large Advisory Committee. (This is according to ICANNWiki. ICANN’s ALAC membership page currently is a 404 error, so I haven’t confirmed she’s still a member.)
Dreyfus doesn’t just help companies file trademarks. She also assists with UDRP complaints. Oh, and she’s also a UDRP panelist.
Her firm isn’t just helping Roussos with trademarks. It also helped new TLD applicant StartingDot file a bunch of trademark applications in the European Union this year. Many of them include a stylized logo similar to Roussos’ marks.
dot Luxe
dot Restau
dot Sport
dot Moto
dot Auto
dot Vet
dot archi
dot design
dot bio
dot immo
dot ski
(Dreyfus & Associes is listed as the representative on only some of these.)
Let the games continue.
Who Cares says
Who cares?
The entire gtld concept is stupid and will go down in flames, trademarked extensions and all.
If the world really wanted a new domain for say, travel, don’t you think .travel would be thriving today? Newsflash — It’s not. They don’t want it. Deal with that. Get over it. There is simply no demand for your silly-ass generic tld’s. No one wanted them before nor will they want it when it is tried again. Only .com counts. You have been warned.
Tom G says
Now I think I understand better the recent comment outburst between Roussos and TLDH.
It looks like they will be meeting in numerous battlefronts in the NotCom Wars to come.
This is going to be an awful lot of fun to watch.
Tom G says
The trademark war for .eco heats up.
here is some action in the trademark of .eco which is registered by colored planet.
http://ttabvue.uspto.gov/ttabvue/v?pno=92055197&pty=CAN&eno=2
Pierre G says
Hi everybody,
let’s have some fun with new gtld.
first there is no need, second it is expensive, third it is a waste of money and the begining of the end of trademarks issue.
a dot bmw is not problem, but what about thinking about a dot music taken as a trademark ?? or a dot music that is taken and used do you think there will be less counterfeit. a dot xxx was supposed to be only for porn industry remember and trials have ever started … fyi a dot gay is arriving so we can say a dot porn a dot sex are coming with all the bird names don’t you think ? I do think cos sex .com and porn.com have been ranked in the higher sales in the guiness book why not a dot drug or dot coke or dot firearms or more sensitive political subjects??what is the interest of a dot brand a dot company a dot trademark ?? nothing except making money… I totally agree with the ANA !!
I think the more extension there will be the more the dot com will take value
We don’t see yet the possibilities of counterfeit ; how many extensions do we have now ? how many legal procedures do we have it increases every day, do you think it will be better it will be worst !!
Tom Gilles says
found another entity in Germany filing trademarks.
http://trademark.markify.com/trademark-owner/ctm/i-content+ltd.+zweigniederlassung+deutschland/272141
Tom Gilles says
Here’a also a link to my own failed trademark attempt for dotpoker:
http://www.trademarkia.com/dotpoker-85202632.html
It was approved, and published, subsequently reviewed and refused – for good reason, top level domains are generic and merely descriptive.
So, a .whatever is just a thing, like ‘pudding’ – according to the USPTO – you can’t trademark something for what it is.
Tom Gilles says
I’ll complete the thought – so in my case with dotpoker the reviewer correctly stated that ‘dot’ doesn’t add anything significant. ‘dot’ just represents the punctuation mark.
In other words – ‘dotpoker’ ‘dot poker’ and ‘.poker’ are all identical. End users will instantly recognize all of them as a top level domain – the conclusion of a domain address. Therefore, merely descriptive.
None of them can be trademarked.
I expect there to be more attempts by registries after the contracts are secured to get their tld trademark registered. I expect them all to fail. Even if they get by an initial examiner, someone with a legitimate business interest can easily object and get it refused.