Q&A on USPTO’s draft guide for new top-level domains

We spoke with Erin S. Hennessy, an intellectual property partner at Bracewell & Giuliani in Seattle, about the U.S. Patent & Trademark Office’s draft-examination guide on policy and procedure changes for handling applications for marks comprised of generic top-level domain names (gTLDs) for domain name registration or registry services.

The USPTO requested comments on the proposed draft (.doc file), which can be submitted through the office’s online collaboration tool until  Oct. 23, 2013.

The office provides more information here.

Westlaw Journals: Why did the U.S. Patent & Trade Office decide to examine its policy regarding generic Top Level Domains or gTLDs for domain name registration or registry services?

Bracewell & Giuliani's Erin Hennessy

Erin S. Hennessy: The Internet Corporation for Assigned Names and Number (ICANN) has instituted a program to significantly expand the number of new generic top-level domain names (gTLDs), or the letter string that appears to the right of the “dot.” (For example in westlaw.com, the .com is the gtld). On June 13, 2012, ICANN announced that it received applications for 1930 new gTLDs, covering everything from A to Z or .app to .zip.

Historically, the PTO has generally refused registration of a mark composed solely of a TLD for domain registry services.  This was premised on the concept that gTLDs typically were merely abbreviations of the class of intended users of the gTLD or the subject matter of the domain space (think .com for commercial entities and .edu for educational institutions).  While many of the 1930 new gTLD applications cover generic terms such as .car, there are also many brand name applicants such as .jaguar.  The PTO, therefore, had to respond to the change in the Internet landscape whereby trademarks or source identifiers make up a gTLD.

WJNow that we may see websites with registered trademarks as the domain, e.g., http://store.nike could be a URL under this new system, does that mean that the trademark owner or Nike would offer a domain name registration or registry service?

ESH: Yes, when applicants applied for a new gTLD, they were essentially applying to run a registry business.  Some of these companies may only be registering domains for their organizations but they still are required to have the full infrastructure of a domain name registry business.

WJ: Do these changes affect websites that may have registered trademarks as part of their URL, but that wish to keep the .com as their top-level domain? Will they lose their trademark rights if they choose to stick with the .com?

ESH: Trademark owners will not lose trademark rights if they continue to use their .com. Instead, the issue becomes choice of business model – brand.com or .brand. In fact, from a marketing and branding perspective, there is an argument that in the short to mid-term, continuing to use your .com is the smarter option since your customers are already trained to go to brand.com to find information about a particular company. A significant amount of marketing dollars will likely be spent by the brand owner re-educating consumer about a company’s new .brand.

WJ: The word generic in the phrase generic top-level domains seems to go against trademark theories. Would it be better to call it trademarked top-level domains? Will we see this eventually?

ESH: In view of the large number of .brand applicants, you may be correct that “generic” may not be the most accurate term in the long run. However, there are many more generic terms that have been applied for so “trademarked top-level domains” is not entirely accurate either. Maybe we’ll see two different terms developing!

WJ: Do you think the draft-policy changes will affect trademark owners considering applying to ICANN for domain registry services?

ESH: Generally speaking, the trademark owners that have applied for brand-focused gTLDs have strong existing rights in their marks so these new rules will likely not present a large obstacle to achieving trademark registration for domain registry services.

WJ: The comment period ends Oct. 23, 2013. From what type of companies and entities do you expect to see comments? What companies or entities would you recommend submit comments?

ESH: I would expect that stakeholders in the current process will weigh in – current new gTLD applicants that will be affected by the rules change. We may also see entities that might be considering an application in the next round. For them, it would be beneficial to have a voice in the trademark policy-making process now as they contemplate their plans for the future.

WJ: Thank you so much for your time.


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