It’s time for another reminder about a failed trademark strategy.
With news of Unstoppable Domains’ lawsuit filed week, and another couple of other entities applying to trademark blockchain top level domains, it’s time for another reminder: The USPTO doesn’t approve trademarks for top level domains (with one exception, which I’ll discuss later).
The U.S. Patent and Trademark Office has made it clear that it doesn’t approve these marks, and it reiterated this in 2013 in Note 12-01.
Companies tried to “front run” the 2012 ICANN new TLD expansion round by filing trademark applications. Those filed in the U.S. were denied, although companies managed to get them in other jurisdictions. The ploy failed; ICANN didn’t give any weight to these trademarks when issuing new TLD contracts.
The issue has now come up with blockchain-based domain names. Unstoppable Domains is suing to block a company from running a .wallet domain in the competing Handshake system.
Unstoppable Domains has tried for years to get U.S. trademarks for its top level domains. It has largely failed. It managed to push two intent-to-use applications through, but it has delayed providing a specimen of use. And, I suspect when it does, they will be denied. In Unstoppable’s (currently unapproved) application for “Wallet” without a preceding dot, the examiner notes:
…the applicant is advised that if the applicant submits a specimen showing the mark used with the leading dot, registration will be refused because the mark in the drawing is not “a substantially exact representation of the mark” on the specimen, and is a material alteration of the mark.
Think of the rationale this way: if you see the web address Amazon.com, do you think “Verisign” (the registry for .com) or “Amazon” (the big commerce company)?
That’s why top level domains don’t function as trademarks. Here’s how the USPTO sums it up in its 2013 note:
A mark composed solely of a gTLD for domain-name registration or registry services fails to function as a trademark because consumers are predisposed to view gTLDs as merely a portion of a web address rather than as an indicator of the source of domain-name registration or registry services. Therefore, registration of such marks must initially be refused under Trademark Act §§1, 2, 3, and 45, 15 U.S.C. §§1051, 1052, 1053, and 1127, on the ground that the gTLD would not be perceived as a mark.
There is one exception: if it’s a “dot brand” top-level domain. The mark has to be famous outside of (and before becoming) a top level domain. As it currently stands, the mark owner also needs a contract with ICANN to operate the top level domain. Could a brand potentially get a trademark under these circumstances with an alt-root domain? Perhaps, but that’s not the issue with Unstoppable’s “wallet” application and many of these other trademark attempts. Unstoppable doesn’t have a well-known trademark for wallet. And wallet is a fairly descriptive term for a system designed to connect to crypto wallet addresses.
Unstoppable Domains isn’t the only company trying this. A company called Multi Chain Domains LLC applied for a .vault trademark this month. And the registrant of the Handshake domain .musicnfts has also applied.
According to the USPTO’s rules, these applications will be denied.