What is planet.ECO up to with its latest trademark filing?
A company that appears to be out of the running for the .Eco top level domain name has filed an intent-to-use trademark application for “.Eco”.
planet.ECO LLC was one of four applicants for the .Eco top level domain name. Rival applicant Big Room won a Community Priority Evaluation for .Eco, meaning it will get rights to run the domain name exclusively.
Two other applicants, Donuts and Minds + Machines, filed with ICANN for the Independent Review Process to challenge the community priority decision. That challenge is still pending.
planet.ECO does not appear to have further challenged the community evaluation decision.
But on December 4, it filed an intent-to-use trademark application with the U.S. Patent and Trademark Office for .eco for “Domain registry operator services”. planet.eco already has a heavily contested registration for “.eco” from many years ago, but it does not mention any sort of top level domain name registry services.
The U.S. Patent and Trademark Office does not register trademarks for top level domain names, so planet.ECO’s latest application will be denied.
Still, what is planet.ECO up to? Is this positioning to still go after Big Room? Or are the two parties now in cahoots?
Emails and messages to planet.eco and Big Room this morning were not immediately returned.
Waste. Of. Time.
Someone re-invents this broken wheel about every six months. As if lightning is going to strike and the USPTO is suddenly going to begin to issue registrations for TLD strings for registry services. They have a form letter for these refusals.
It’s amazing what people will waste their time and money doing.
May be hoping to get a trademark as .eco isn’t a domain extension yet.
Ummmm…. no.
One does not “get a trademark” from the USPTO. One registers a trademark. The trademark rights arise from use of the mark in interstate commerce, as a distinctive mark.
There have been several stupid theories and arguments advanced in these types of applications. What is remarkable is that the hacks who prosecute them don’t even bother to research the same stupid re-invented theories and arguments to understand why what they are pursuing, as a more fundamental problem, is a stupid proposition – i.e. that a gTLD, the point of which is to allow countless others to use the gTLD string for whatever they want, acts as an identifier of goods and/or services of the registry. It’s as if “Mercedes” was in the business of manufacturing star decals to stick on any car you want, while claiming it was their proprietary mark for cars.
But it’s not as if there hasn’t been a parade of silly stunts and schemes to avoid the basic substantive reality of the question. Among my favorites are the over two dozen cookie-cutter “figurative” registration applications filed in Europe by a well-known “community” applicant, as an attempt to raise capital by fobbing them off on simple-minded TLD applicants. Then there are the folks who set up registrar reseller sites with some sort of silly “.whatever domain services” frame around it as their “specimen of use in commerce” for the USPTO.
And, last but not least, are the ones who get trademark registrations on goods/services other than domain registry services – stupid stuff like “.xxx” as a brand of “crayons”, complete with an Avery label stuck on a crayon box saying “.XXX” – and believe they have obtained some kind of leverage against a TLD applicant or operator.
It’s a bag of stupid tricks sold by ambulance chasers to fools. What is depressing are the repetitively dull and small set “bright ideas” that they come up with and think they invented. It’s the legal equivalent of perpetual motion machine inventors.
No, you do not pay a $300 fee to the USPTO, perform some voodoo ritual, and walk out with an exclusive entitlement to operate a gTLD.
UPDATE: planet.ECO WINS .ECO® and gets victory in 10 year fight over .eco.
As Allemann’s dated articles appears at the top of .ECO Google news continue to mis-inform the public, we provide the truth…
On May 7, 2019 after wasting another 2 more years of the U.S. government’s precious time and resources, Big Room Inc’s December 15, 2016 “.eco” trademark case against planet .ECO® LLC was rejected. In this 5th attempt Big Room Inc. was finally Dismissed with Prejudice by the United States Trademark Trial and Appeal Board. http://ttabvue.uspto.gov/ttabvue/v?pno=91231750&pty=OPP&eno=57.
After Big Room Inc’s final dismissal – planet .ECO® was issued 2 new .ECO trademarks from the United States Patent and Trademark Office (USPTO) in addition to its incontestable trademark covering .ECO Internet Domain Name Services, registered since 2009.
On July 23, 2019 the USPTO issued .ECO Registration No. 5813887 – for “Computerized database management,” in Class 35
On September 3, 2019 the USPTO also issued .ECO Registration No. 5851826 – for “advertising and marketing services…” in Class 35.
On September 4, 2019 the USPTO also rejected Big Room Inc’s application to perform .ECO Registry Operator Services – http://tsdr.uspto.gov/documentviewer?caseId=sn87327563&docId=OOA20190904152931#docIndex=0&page=1.
According to a Department of Commerce representative, the agency did not award Big Room Inc. rights to operate the .eco Registry.
Since 2010 planet .ECO® has prevailed in all 6 Federal Trademark proceedings brought forth by Big Room and TLDH.
Wowzer, Mr Berryhill, that was the most succinct and useful posting I have read on this topic! Thank you, you have made the point(s) very clearly.
Minding, of course, that at the second level, there is no end of shenanigans that may be played upon the Trademark Clearinghouse in order to secure Sunrise registrations in new gTLDs. Figurative marks, Benelux one-week wonders, token use… it’s all fair game, and there is no shortage of the same sanctimonious hacks who rigged this game and will be happy to cash a check to help you out.
“The USPTO’s mission is to ensure that the Intellectual Property system contributes to a strong global economy, encourages investment in innovation, and fosters entrepreneurial spirit. Intellectual Property is an invention or creation embodied in the form of a patent, trademark, trade secret, or copyright.Oct 4, 2009
Thus, what local or nationwide priority did Big Room Inc., a Canadian Company, have for “.eco” and who’s approval authority was used to delegated “.eco”, considering we paid $185,000 and passed the “.eco” evaluation.
Our ideas, plan and trademark have been hijacked and…
After long wait, we too have a lot of questions?
.ECO(R)
.Eco loser files trademark application for .Eco
On March 1 2017 Big Room Inc.’s 4th Registration attempt to obtain “.eco” was once again refused by the United States Patent and Trademark Office (USPTO) because of a likelihood of confusion with the mark in U.S. Registration No. 3716170.
This time Big Room Inc. applied to register “.eco” in stylized form for:
Domain registry operator services, in Class 42.
planet.ECO LLC is the exclusive registrant of the mark “.eco” in standard-character form for:
Design, creation, hosting and maintenance of internet sites for third parties; Hosting of digital content on the Internet; Providing specific information as requested by customers via the Internet, in Class 42.
Thus, the USPTO determined when viewed in their entireties, the “.eco” marks are similar in commercial impression and therefore issued the refusals.
See:
http://tsdr.uspto.gov/documentviewer?caseId=sn87327563&docId=OOA20170301165412#docIndex=0&page=1
Big Room Inc., the Conflicted Canadian Company is one of the co-creators of the Community Priority Climate Change Hoax it used to “win the management of the .ECO TLD”. Since 2007, 5 years ahead of our application, Big Room Inc. not only started applying for .ECO and lead the ploy but failed to obtain 4 applications for .ECO. Along with the help of others Big Room Inc.arbitrarily and capriciously continues causing irreparable damage to our US based small business that is the exclusive registrant to the US .ECO trademark and rightfully applied to naturally expand its business by applying for the .ECO gTLD.
The above article written by ANDREW ALLEMANN and numerously commented by attorney John Berryhill are negative propaganda intended only to create confusion and harm planet.ECO. Note to some -yes, it is a conspiracy, how else can one explain 3 of our collective competitors (less than 1/2% of all applicants) winning 20% or more of all delegated gTLD’s.
Members of the Environmental Community and Big Room Inc., both co-founded by Jacob Malthouse, began applying for the .ECO TLD since Jan. 2007.
Malthouse admitted the .ECO award (the ploy) could not have been successful without the support of the with the support of the Environmental Community. We believe most of the Environmental Community and registrars were unlikely unaware of Big Room’s sinister ploy, unfair competitive advantages and Federal violations used to obtain insertion into the authority root zone file to unlawfully monetize .ECO.
Years of continuous unfair competitive advantages eventually resulted in the unlawful award delegation of “.ECO” to the Environmental Community. A properly warranted DoC agency personnel with exclusive award authority did not award delegation of .ECO, per Mr. Kline United States Department of Commerce Representative / Counsel.
Prior to the unlawful delegation in August 2016 we submitted the attached letter to the Government. MOTION TO DISMISS IN TTAB ( https://tsdr.uspto.gov/caseviewer/pdf?caseId=77452991&docIndex=13&searchprefix=sn#docIndex=13) that further explains the dubious activities of what appears to be Big Room Inc. and its Environmental Community attempting to Cash in on Climate Change.
Further note that the U.S. Patent Trademark Office has firmly denied all 4 of Big Room’s Applications for .ECO, including a March 1, 2017( LINKS: USPTO OFFICE ACTION #87327563 ( https://tsdr.uspto.gov/documentviewer?caseId=sn87327563&docId=OOA20170301165412#docIndex=0&page=1) ; USPTO OFFICE ACTION #77646029 (https://tsdr.uspto.gov/documentviewer?caseId=sn77646029&docId=NOA20120717223028#docIndex=2&page=1) ; USPTO OFFICE ACTION #77523015( https://tsdr.uspto.gov/documentviewer?caseId=sn77523015&docId=OOA20091207101341#docIndex=9&page=1); USPTO OFFICE ACTION #77523010 ( https://tsdr.uspto.gov/documentviewer?caseId=sn77523010&docId=OOA20091207100628#docIndex=9&page=1).
Prior to this, in March 2012 .ECO® filed in California Federal Court, against Big Room Inc., which included, FEDERAL TRADEMARK INFRINGEMENT 15 U.S. Code § 1114 ; FALSE DESIGNATION OF ORIGIN AND FALSE ADVERTISING 15 U.S. Code §1125 ; COUNTERFEITING 15 U.S. Code §1114. Big Room Inc. with an office in New Haven, CT. lied to court about its incorporation and the location of its office and practice. Big Room Inc’s hand are unclean and so are those that have knowingly supported its dubious and sinister activities all to cause harm our company.
ANDREW ALLEMANN issues a press release claiming we threatened registrars. Note: No registrars have made such claims.
ANDREW ALLEMANN reminds me of a kid named Andre in my 4th grade class that was afraid to get into fights but knew exactly how to instigate them. I am sure we have our own Andre’s.
See Part 2 of ANDREW ALLEMANN’s bulling here – https://domainnamewire.com/2017/05/10/eco-loser-threatens-registrars/
Caveat emptor – Buyers of .ECO domain names beware. You may want to ask Big Room Inc. if the US Government awarded it the delegation of .ECO and/or a trademark for .ECO.
planet.ECO LLC is the exclusive registrant of .ECO(R) in the United States. .ECO was coined in 2005 by it’s co-founder Moses Boone.
“ANDREW ALLEMANN issues a press release claiming we threatened registrars. Note: No registrars have made such claims.”
Umm, why do you think I wrote this article? The entire reason is that you send a threatening email to registrars.
And you are sending fake news to your readers. Very sad :(.
You are making claims and have not cited 1 company, nor have we been informed by any of the registrars that our cease and desist letter was a threat.
What kind of threat are you talking about? You are making us concerned, especially since this is all in your imagination.
Your fake news, article or whatever you call it, noted that we did not get a trademark for .ECO and were involved in a frontrunning scheme to apply for the .ECO gTLD.
Wrong Company, that’s Big Room Inc., the company co-founded by a former ICANN executive, that co-created the community priority mechanism used to unlawfully usurp trademark law and obtain an unauthorized delegation for .ECO.
As a reminder, we will catch up with you later on damages.
The end.
The .eco gtld award delegation was never authorized and is a result of a “Rigged” competition performed in a Federal Contract. According to the DoC Representative/Counsel Mr Kline, the award delegation was not authorized by the ntia/doc agency although the Federal Contract requires the explicit approval authority to come from the agency.
The unauthorized .eco registry operator award was made to the conflicted Canadian company Big Room Inc. founded by a former ICANN executive (2005-2007), who co-created the illegal community evaluation policy which it then used to prevail in a contrived win.
The US government has a legal responsibility to investigate the wrongdoers with the full brunt of the law for offenses committed upon the unsuspecting citizens of the us and the world, all in accordance with Title 18 U.S.C. § 2.
Now that someone other than the Government has made an award that could only be made by the Government we ask the $1,000,000 question:
Who awarded .ECO to Big Room Inc and with what authority?