The proposed requirement for relaxation of the currently strict rules against registration of gTLDs makes sense. The AIPLA comments that special rules for registration of gTLDs as trademarks or servicemarks are not needed. The proposed Examination Guideline would allow registration of gTLDs upon proof of :
(a) prior registration for an identical mark for the same services or goods,
(b) proof that consumers would associated the gTLD with the prior registration as to source, and (c) proof of a domain registry agreement with ICANN for the gTLD.
I support this guideline for the following reasons:
1) Ambiguity as regards meaning of “generic”, There is inherent ambiguity due to the difference in meaning of the term "generic" with respect to trademarks/servicemarks and "generic" as respects TLDs. Since this guide is for examination of an application for trademark or servicemark registration of a "generic" TLD, use of the guide to resolve the ambiguity in meaning of "generic" is important to avoid consumer confusion. The introductory part of the guide attempts to do that by reference to the ICANN explanation of gTLDs. I think the guide needs to clearly note the ambiguity and directly address the ambiguity. One way is to simply state that "In view of the use of "generic" in the term gTLD, to avoid consumer confusion, a gTLD must be presumed to be, as it is named, "generic" for trademark purposes until proven otherwise." The guide explains proof that would show a generic TLD not to be "generic" for trademark and servicemark purposes, despite being so named.
2) Distinctiveness concerns: The existence of a prior registration, should be stated not as a mandatory requirement but rather as being prima facie proof of distinctiveness for domain registry services similar to the ID of that registration, so that merely adding "dot" in front should be, unless the Examining attorney can show otherwise, considered as retaining the distinctiveness. [e.g., COKE should be considered proven distinctive if a registration for COKE exists for the same goods or services for which domain registry services are in the ID of an application to register the gTLD]. The negative, however, is not true. That is, the absence of a registration for COKE for any particular goods or services should not prevent Coca Cola Company from registering .COKE for domain registry services. Coca Cola Company should be able (indeed, the only one able) to register ".COKE" for "domain registry services" related to any goods or services, provided of course Coca Cola Company uses .COKE for such services. The AIPLA makes a good point that no special rules are really needed as regards descriptiveness issue. If the applicant or registrant does not have an active pertinent ICANN domain registry services agreement ("PIDRSA" below) [i.e., one for domain registry services for the gTLD for the ID of the servicemark/trademark application/registration] for a gTLD, it would be a deception to allow the registration of that gTLD as a mark at the USPTO. This is because, in the USA, trademark and servicemark rights derive primarily from use not registration, so the public can justifiably assume that a trademark or servicemark registration for a gTLD means that there is an active PIRDSA. To avoid deception of the public, not only should a PIDRSA be required for registration, it should be a requirement for maintenance of the registration. That is, there should be an affirmative duty upon the registrant to promptly cancel the registration if the registrant ceases to have a PIDRSA, or an affirmative duty to promptly notify the USPTO of the non-existence of a PIDRSA coupled with a prompt automatic cancellation of the registration.
3. Deceptiveness Concerns: The main point of this comment is that distinctiveness is not the only issue. There is a deceptiveness issue. Trademark and servicemark rights in the US arise primarily from use. Use of a gTLD requires a PIDRSA (Pertinent ICANN Domain Registry Services Agreement), that is an agreement with ICANN permitting domain registry services with respect to the gTLD for the goods and services in the ID of the pertinent application or registration. Therefore, the public can rightly assume that a trademark or servicemark registrant has the PIDRSA required. If not, the application should be rejected and/or the registration cancelled. There should be an affirmative duty upon applicants and registrants to withdraw/cancel any servicemark/trademark application/registration for the gTLD promptly upon no longer having a PIDRSA. There should also be a duty upon the USPTO to sua sponte cancel an application/registration upon both (a) learning of the non-existence of a PIDRSA, whether via ICANN, applicant/registrant or the public and (b) verifying with ICANN such non-existence. Anything less would lead to possible mischief, fraud, or deception. no-PIDRSA notice.
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