Special Issues with Domain Names as Trademarks

SURNAMES

If a mark is composed of a surname and a TLD, it cannot be registered because the mark is primarily merely a surname.

A TLD has no trademark significance. If the primary significance of a term is that of a surname, adding a TLD to the surname does not alter the primary significance of the mark as a surname.

DESCRIPTIVENESS

If a proposed mark is composed of a merely descriptive term combined with a TLD, it cannot be registered on the ground that the mark is merely descriptive. This applies to trademarks, service marks, collective marks and certification marks.

• Example: The mark SOFT.COM for facial tissues.
• Example: The mark NATIONAL BOOK OUTLET.COM for retail book store services.

GENERIC REFUSALS

If a mark is composed of a generic term for applicant’s goods or services and a TLD, it cannot be registered on the ground that the mark is generic and the TLD has no trademark significance. Marks comprised of generic terms combined with TLDs are not eligible for registration on the Supplemental Register, or on the Principal Register.

• Example: TURKEY.COM for frozen turkeys is unregistrable.

• Example: BANK.COM for banking services is unregistrable.

GEOGRAPHIC MARKS

The examining attorney should examine marks containing geographic matter in the same manner that any mark containing geographic matter is examined. Depending on the manner in which it is used on or in connection with the goods or services, a proposed domain name mark containing a geographic term may be:

1. Primarily geographically descriptive under §2(e)(2) of the Trademark Act, or

2. Primarily geographically deceptively misdescriptive under §2(e)(3) of the Trademark Act, and/or

3. Merely descriptive or deceptively misdescriptive under §2(e)(1) of the Trademark Act.

DISCLAIMERS

If a composite mark includes a domain name composed of unregistrable matter (e.g., a merely descriptive or generic term and a TLD), disclaimer is required. If a disclaimer is required and the domain name includes a misspelled or telescoped word, the correct spelling must be disclaimed.

A compound term composed of arbitrary or suggestive matter combined with a "dot" and a TLD is considered unitary, and therefore no disclaimer of the TLD is required.

Mark Disclaimer

XYZ BANK.COM                      BANK.COM
XYZ FEDERALBANK.COM     FEDERAL BANK.COM
XYZ GROCERI STOR.COM     GROCERY STORE.COM
XYZ.COM                                   no disclaimer
XYZ.BANK.COM                        no disclaimer
XYZBANK.COM                        no disclaimer

PHONETIC EQUIVALENT OF A TOP LEVEL DOMAIN

Marks containing the phonetic equivalent of a TLD (e.g., XYZ DOTCOM) are treated in the same manner as marks composed of a regular TLD. If a disclaimer is necessary, the disclaimer must be in the form of the regular TLD and not the phonetic equivalent.

• Example: The mark is INEXPENSIVE RESTAURANTS DOT COM for providing information about restaurants by means of a global computer network. Registration should be refused because the mark is merely descriptive of the services.
• Example: The mark is XYZ DOTCOM. The applicant must disclaim the TLD ".COM" rather than the phonetic equivalent "DOTCOM."

Miscellaneous Challenges SPECIFIC TO domain names

• The USPTO does not cross-check with other databases before registering the domain name as a mark.
• Domain names may exist apart from any goods or services.
• Domain names cannot be differentiated by graphic elements.
• Domain names are issued on a first-come, first-registered basis, and the registrars do not check to see whether a domain name request is related to existing trademarks.
• Many businesses adopted their marks before the Internet existed or before the body of law on domain names as trademarks existed.

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