U.S. Patent and Trademark Office REGISTRATION OF DOMAIN NAMES IN THE TRADEMARK OFFICE _________________________________________________________________ REGISTRATION OF DOMAIN NAMES With the recent publication of the Network Solutions, Inc. (NSI) Domain Dispute Resolution Policy Statement, the number of applications for domain names in the USPTO has greatly increased since the Policy Statement refers specifically to the benefits arising from having a registered trademark or service mark. The PTO is developing policy for handling this new breed of mark. Information concerning the present state of this policy may be helpful for applicants filing in this field. A discussion of this topic must begin with the PTO policy concerning a related field - telecommunications. The telecommunications field grew rapidly during the last two decades. In 1974, the Office registered less than 100 marks in Class 38, the telecommunications class. With the organizational and technological revolution in the telecommunication industry, trademark registrations in Class 38 mushroomed to over 800 per year in 1992. However, it became apparant that some entities that had been filing in Class 38 did not provide telecommunications services as contemplated by Class 38 of the International Nice Agreement. These entities were applying for services in that class because the service activity was being rendered via telephone. To sort out this problem, the Office developed the "link provider/content provider" policy. Applicants who merely transport their services over telecommunications facilities (e.g., "providing interactive voice response consumer lending services for credit unions") should not be considered as rendering a service in Class 38. A service in Class 38 provides the technical link by which 'persons', used in its broadest sense, can communicate. Such a service provider would be considered the "link provider". However, a service which offers "content" and that is incidentally provided by means of this telecommunications link is in the class it would be in were the content not provided by electronic means. Generally, these "content- provider" services disseminate information and, like other information services, should be classified in the class of the information provided. Appropriate language for such a service would be: "financial information services provided by telephone" (Class 36). Variations on the language are acceptable; however, the ID must first indicate the field of information provided since this will control classification and then the applicant may indicate the electronic or telecommunications means by which the information is transmitted. If the applicant provides information in a very wide variety of fields, the ID should indicate that and the service would be classified in Class 42. Then we began seeing applications for publications appearing on computers through services such as America Online ® CompuServe ®and Prodigy ®as well as through sites on publicly accessible computer networks. After much controversy, it was decided that these publications could not be considered goods in Class 9 or Class 16 since they were not in tangible form when delivered to the end user from the provider. Therefore, this activity was considered a service. The service being provided is the making available of magazines, books and other publication via computer in that it makes the receipt of these publications convenient and flexible for computer users. Appropriate language for these services would be "computer services, namely, providing on-line [indicate specific nature of publication] in the field of [indicate subject matter of publication]" in Class 42. Thus, a mark such as GQ.COM for GQ ®magazine made available via computer would be identified as "computer services, namely, providing on-line magazines in the field of fashion, entertainment, health, lifestyle and other topics of general interest." However, there was a missing link - the access provider; the services such as America Online ® CompuServe ® and Prodigy ® These entities generally do not provide the Class 38-type telecommunications service for their users. They may provide content, but we have dealt with that issue above. Their primary activity would be perceived as providing the computer access to get from your home PC to the sites of the content providers. Therefore, the Office developed the following ID for this specialized activity: providing multiple-user access to a global computer information network and we classified it as a computer service in Class 42. It was really a relatively small step to go from the on-line magazines to the World Wide Web sites and their domain names. In a sense, these terms are throw backs to our very earliest attempt to sort out services rendered by electronic means. Our approach has been that the "content provider" or web site owner is providing information by electronic means, specifically, by means of a global computer information network. Therefore, the service of providing the information offered at the web site is an information service that should be classified in the class of the information; business information in Class 35, financial information in Class 36, building construction, repair or maintenance information in Class 37, telecommunication information in Class 38, transportation and storage information in Class 39, material treatment information in Class 40, education and entertainment information in Class 41 and everything else in Class 42. As with the on-line magazines, if the web site offers a wide variety of information, from stock quotations to hot vacation spots to profiles of celebrity life styles, this type of general information service would be classified in Class 42. This scheme complies with the classification of information services under the International Nice Agreement. Of course, all of these identifications should be qualified with the indication that these information services are rendered by means of a global computer network or similar terminology. It is also important to keep in mind web sites that advertise and sell the goods or services of the site owner. This type of activity would not be recognized as a service under the Lanham Act if not rendered by computer, so it can't be treated as one when it is rendered by computer. However, the PTO should be able to accept a very low threshold of value-added activity on such sites to qualify them as information services. For example, a specialty food producer may advertise and offer its products for sale on its web site. That in itself would not allow for registration of the domain name for the site as a service mark. However, if the site also included recipes, the history of some of the products and other similar non- commercial information, the domain name could be accepted as the identifier of an information service in the field of food and food preparation rendered by means of a global computer information network in Class 42. We have come to realize that the most difficult part of registering these domain names will be providing acceptable evidence of use of the mark presented for registration. Analogies have been made with the treatment of 800 telephone number registrations and tradenames. Most applicants have been applying for marks in the form of XYZ.COM and the PTO is treating the .COM portion of the mark like the 800 part of telephone number applications. That portion of the mark has no trademark significance and, so long as it is connected by the period to an arbitrary or suggestive term, it will not effect the registrability of the mark as a whole. Possibly, the addition of the other computer protocol insignia, such as the `http://www." portion of the mark, would have the same non-effect. However, if the term that carries the trademark significance of the mark; that is the term other than the computer protocol portions of the mark, has a descriptive meaning in relation to the services identified in the application, the entire mark will be denied under Section 2(e)(1) of the Lanham Act as being descriptive. The more difficult problem in this area seems to be crystallizing into a specimen issue. At this point, most of these applications in the PTO are based on an intent-to-use the mark in commerce, therefore, very few specimens exist on which to base a policy. However, use of these marks can be seen outside of the narrow confines of a trademark application and there are some serious problems in this area. Generally, domain names are used like telephone numbers and addresses. They are usually printed in small letters on business letterhead stationery, business cards or advertisements in the same way addresses and telephone numbers are presented. They provide information as to how to contact the entity, rather than as identifiers of a service. Specimens of this type will have to be refused as not showing service mark use of the matter presented for registration. By analogy with tradenames, the more distinctive the presentation of the domain name, the further it is physically removed from other merely informational data on the specimens; the more it will be perceived by the Office as functioning as a service mark and not just as contact information for a particular entity. Some uses that have been encountered outside of the PTO include magazines advertisements for the web site in which the significant portion of the domain name has been highlighted or set off in some other visual way. Yet, the rest of the domain name protocols are presented with that portion. If the applicant has applied for only the highlighted portion of this domain name, would we have to find that the mark differs so substantially from the specimen that the specimen must be found to be unacceptable? Or will this specimen support the use of any portion of the domain name as the mark presented for registration? If the Office were to find that the extraction of a portion of the domain name results in a mutilation of the mark as presented in the specimens, will we allow the applicant to add the missing portions or will we disallow those additions as a material alteration from the mark as originally filed? These questions are as yet unanswered in the PTO and we will have to wait until use specimens begin to come in for these marks before we can clearly answer them. Finally, a factor that is out of the control of the PTO but that must be kept in mind is the Policy Statement from NSI. Exactly what was meant in the Policy Statement by the reference to a registered trademark or service mark? Must it be registration of the entire domain name, including all computer protocol notations? Is the registration of the XYZ.COM portion of the domain name adequate to take the action allowed for in the Statement? Must the registration be for the exact term that is in controversy as a NSI domain name registration? These questions, too, must be answered, and their answers may have an effect on what the PTO will accept in the registration of domain names. For further information in this area contact jmarshal@uspto.gov www@uspto.gov Last Modified: 12 February 1996