[author: Meryl Hulteng]
For both new and existing businesses, new generic top-level domains (gTLDs) offer increased flexibility and opportunities for an expanded online presence. A gTLD is the part of a web address that comes after the “dot” (“.”). Historically, gTLDs were limited to only a few, such as “.com,” “.org” or “.net.” However, in 2012, the Internet Corporation for Assigned Names and Numbers (ICANN) began accepting applications for new gTLDs, and the first new gTLDs went live in 2013. Some of the new gTLDs are company and brand names such as .Abbot or .Amex, while others are descriptive, for example, .book, .clothing, .flowers and .pharmacy. A list of the new gTLDs and their release dates can be found here. The trademark issues arising out of the new gTLDs are many — here we explore their impact on trademark applications both for new applicants and existing trademark holders.
Generally, the new gTLDs will have little impact on the trademark application process aside from choices for trademarks that might also double as domain names. That is, the process to register yourname.shopping will be the same as the process that has applied to registering yourname.com. In both instances, the mark must be distinctive and in use. In addition, unregisterable matter, such as descriptive or generic terms and non-source-identifying gTLDs may need to be disclaimed. In our example, “.com” and “.shopping” are both technically unregisterable matter. With that said, in many instances the U.S. Patent and Trademark Office (USPTO) has allowed such marks to register, without any disclaimer of the “.com” or “.shopping” portion of the mark. Thus, applications for marks that include a non-source-identifying gTLD are likely to receive the same treatment by the USPTO as marks did before the introduction of the new gTLDs.
If a gTLD has source-indicating significance (.yourbrand), it may be registrable as a trademark. However, not every gTLD will qualify as a trademark. If the proposed mark is perceived merely as part of a website address, it will not be registrable. In addition to the requirement that the trademark is source-identifying, the applicant of such a mark will have to show that (1) he/she has registered the gTLD with ICANN, and (2) the services provided will primarily be for the benefit of others. As of now, there are few businesses or individuals that have taken advantage of this new trademark opportunity. But as these new gTLDs are launched and their presence becomes increasingly important, we may see an increasing number of trademarks composed solely of new gTLDs.