Everyone knows gTLDs such as “.com” and “.net” are not registrable as trademarks, but what about “.nissan”? In view of ICANN’s impending rollout of hundreds of new gTLDs, the USPTO has recently revised its policy governing registration of gTLDs to provide that gTLDs may be registered as trademarks under certain circumstances.
Under the revised policy, gTLDs are registrable as trademarks provided that:
- the gTLD will be perceived as a source identifier;
- the applicant has a current registry agreement with ICANN; and
- the services provided are primarily for the benefit of someone other than the applicant.
To satisfy the first element, an applicant must (1) own one or more registrations for goods or services that are related to the subject matter of the websites that will be registered via the new gTLD, and (2) submit “significant” additional evidence showing that the gTLD serves as a source indicator. Such evidence may include advertising and promotional materials, the amounts expended for such promotion, and consumer testimonials.
Second, to avoid a deceptiveness refusal, the applicant must include a verified statement that it has a Registry Agreement (or a currently pending application for a Registry Agreement) with ICANN. If the application is pending, the Examining Attorney may suspend the application until the application has been approved.
Finally, to be considered a “service” within the meaning of the Lanham Act, the applicant must indicate that the registry and registrar services it offers under the gTLD are primarily for the benefit of others. For example, while operating a gTLD registry that is available only for the applicant’s employees or solely for the applicant’s marketing initiatives would likely not qualify as a “service,” operating the registry for use by authorized dealers should meet this requirement.