Trademark a domain

[jberryhill]

I have seen MANY domains with the tld ext trademarked successfully, but many attorneys and guru's claim not possible. I have spoken to attorneys who said it was impossible. Even trademark attorneys at the USPTO Office told me there was no way.

Either your questions have been misunderstood, or you have misunderstood the answers, because this thread has now come full circle.

YES, the USPTO will register "<mark>.<tld>".

The official USPTO policy, since September 1999, says that they will:
http://www.uspto.gov/web/offices/tac/notices/guide299.htm

If that's not enough, the Trademark Trial and Appeal Board established registrability of domain names with the tld in 1998:

A mark composed of a domain name is registrable as a trademark or service mark only if it functions as a source identifier. The mark as depicted on the specimens must be presented in a manner that will be perceived by potential purchasers as indicating source and not as merely an informational indication of the domain name address used to access a web site. See In re Eilberg, 49 USPQ2d 1955 (TTAB 1998).

What people seem to regularly confuse, every single one of the umpteen times this comes up, is that you cannot register a TLD alone for domain registration services.

Another thing that people might be confused about is the absurd notion here generally that a trademark is some kind of official paper that you can get from the government to obtain rights in a string of characters. These questions are along the lines of "I registered foo.com and want to protect it. Can I trademark it?"

I've given up on those sorts of questions, since it becomes too repetitive to keep saying "If you are not using foo.com as a mark in connection with goods and services for which 'foo.com' would be registrable as a distinctive indicator of the source or origin of those goods and services, then, no."

But, no competent attorney or USPTO employee would have said, "you can't obtain registration of a mark consisting of a domain name", and the USPTO has been issuing them for years, in accordance with their own published policy and TTAB decisions on the subject.

 

[David G]

Hi John, Perhaps you could explain in simple terms why the USPTO allowed greatdomains.com to be registered?

Are you saying that if you have a website offering a product or service known by that name (even if generic) then it can be registered? Sorry for the confusion many members have on this issue.

BTW, Yes, it is correct, both USPTO attorneys and a few private practice attorneys told me domains can not be trademarked (period, end of story) without saying any ifs buts ands or maybe's.

See post 5 6 7 & 8 in this thread. http://www.dnforum.com/showthread.php?t=82301

Thanks for your generous participation in the forum.