http://www.uspto.gov/web/offices/tac/tmep/1200.htm
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1209.03(m) Domain Names
Internet domain names raise some unique trademark issues. A mark comprised of an Internet domain name is registrable as a trademark or service mark only if it functions as an identifier of the source of goods or services. Portions of the uniform resource locator (URL) including the beginning, (ââ¬Å
http://www.ââ¬Â) and the top level Internet domain name (TLD) (e.g., ââ¬Å.com,ââ¬Â ââ¬Å.org,ââ¬Â ââ¬Å.edu,ââ¬Â) function to indicate an address on the World Wide Web, and therefore generally serve no source-indicating function. See TMEP çç1215 et seq. regarding marks comprising domain names. TLDs may also signify abbreviations for the type of entity for whom use of the cyberspace has been reserved. For example, the TLD ââ¬Å.comââ¬Â signifies to the public that the user of the domain name constitutes a commercial entity. See Goodyearââ¬â¢s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 602 (1888) (ââ¬ÅThe addition of the word ââ¬ËCompanyââ¬â¢ [to an otherwise generic mark] only indicates that parties have formed an association or partnership to deal in such goods . . . .ââ¬Â and does not render the generic mark registrable).
If a proposed mark includes a TLD such as ââ¬Å.comââ¬Â, ââ¬Å.bizââ¬Â, ââ¬Å.infoââ¬Â, the examining attorney should present evidence that the term is a TLD, and, if available, evidence of the significance of the TLD as an abbreviation (e.g. ââ¬Å.eduââ¬Â signifies an educational institution, ââ¬Å.bizââ¬Â signifies a business).
Because TLDs generally serve no source-indicating function, their addition to an otherwise unregistrable mark typically cannot render it registrable. See Goodyear, 128 U.S. at 602 (the incorporation of a term with no source-indicating function into an otherwise generic mark cannot render it registrable). For example, if a proposed mark is composed of merely descriptive term(s) combined with a TLD, the examining attorney must refuse registration on the Principal Register under Trademark Act ç2(e)(1), 15 U.S.C. ç1052(e)(1), on the ground that the mark is merely descriptive. See TMEP ç1215.04.
Similarly, if a proposed mark is composed of generic term(s) for the applicantââ¬â¢s goods or services and a TLD, the examining attorney must refuse registration on the ground that the mark is generic. See TMEP çç1209.01(c)(i) and 1215.05.
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