The United States Patent and Trademark Office (USPTO) has recently circulated proposed examination guidelines to allow the USPTO to begin providing Trademark Protection for Top Level Domains (TLDs). This is an important new development. TLDs today are currently ineligible for Trademark protection on the basis that they do not constitute a source-identifying mark.
The USPTO is currently in the process of rectifying this situation by extending Trademark protection to Registry Service providers and has released its proposed examination procedures for that purpose. However, there are some very concerning elements to their proposed examination guidelines. Rather than simply applying standard examination procedures to the new Business Class, the USPTO is proposing extraordinary new rules for Trademarks for TLDs. Most concerning of all, the USPTO is proposing that before a Trademark for a Registry Services provider can be granted, that Registry Services provider must sign a contract with ICANN to provide Registry Services.
The USPTO's proposal to involve a separate corporation in the U.S. Trademark evaluation process is concerning, because at a basic level, the USPTO is supposed to be an impartial and independent arbiter of United States Trademark law. By requiring an ICANN contract before a Trademark can be issued, the USPTO is, in effect, putting a California corporation in charge of determining who is eligible for U.S. Trademarks in this industry. Moreover, ICANN, in the event that two applicants are vying for the same TLD mark, has announced their intention of accepting bids from the competitors, with the brand being given to the highest bidder. Therefore, U.S. Trademarks for one of the most cutting edge industries in the world may soon be sold to the highest bidder.
We assert that the USPTO must provide Trademark protection for TLDs, while ICANN should continue to approve new TLD operators. There is clear precedent for this division of responsibilities. The Federal Communications Commission (FCC) grants approval for telecommunications providers to operate on specific frequencies, however, the USPTO grants Trademarks for those operators. In the same way, we assert that ICANN should retain authority to approve new Top Level Domain operators; however, the USPTO must retain authority to administer Trademark law independent of ICANN.
Intellectual Property protection, like private property, is one of America's most precious institutions. Particularly in the Information Age, the greatest care must be taken to promote the progress of science and the useful arts by providing an orderly and fair process for the allocation of Intellectual Property rights in the form of Trademarks. Surely, a bidding process is not what the founding fathers had in mind.
Rather, United States Trademarks should be independent of ICANN approval. Since Trademarks must be used in business within a certain amount of time after the Trademark is granted, anyone who does not have ICANN approval to operate a TLD or who does not operate a TLD on a competing public Internet would lose their Trademark. However, the important thing is that if Trademarks are independent of ICANN's approval, then companies could apply for a trademark for a TLD, and then apply for a TLD with ICANN, thus ensuring that companies do not face competition during the ICANN application process, thus protecting investment. "Through the registration of trademarks, the agency assists businesses in protecting their investments, promoting goods and services, and safeguarding consumers against confusion and deception in the marketplace." (source) Thus, the proper and equal application of Trademark law is in line with the USPTO's stated goals and also preserves the integrity of the USPTO and of ICANN.
It is easy to see why ICANN might not be in favor of standard examination guidelines for Trademarks for TLDs. There were 1,930 applications for new TLDs filed in ICANN's recent application round. Of these, 751 applications were placed in contention sets (which means that the TLD strings were too similar to one another or exact matches of each other to be allowed to coexist.) For example, there were 13 applications filed by different companies all seeking to create the .app Top Level Domain. Due to the high application fee for each TLD application, ICANN made over $215 hundred million dollars in one quarter on duplicate TLD applications alone. This revenue would not have existed if TLD applicants were able to file a request for a $275 trademark before they filed an application for a TLD.
The USPTO's proposed examination guidelines for TLDs are available here. The USPTO is soliciting public comment on these guidelines until September 8, 2013. Please visit this page to learn more about how to share your feedback with the USPTO on this important topic.
Written by Mary Iqbal, Founder of Get New TLDs Inc.