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USPTO: You Will Have To Contract WIth ICANN Before Applying For a Trademark For A New gTLD

Posted on the 13 August 2013 by Worldwide @thedomains

Under the USPTO proposed examination guide, entitled “Applications for Marks Comprised of gTLDs for Domain Name Registration or Registry Services,” you will have to have a contract with ICANN to operate a new gTLD registry before you apply for a trademark for the gTLD:

“The applicant must show that: (i) it has entered into a currently valid agreement with ICANN (a “Registry Agreement”) designating the applicant as the entity responsible for operation of the registry, i.e., maintaining the database and generating the zone file (the “Registry Operator”) for the gTLD identified by the mark; and (ii) the identified services will be primarily for the benefit of others.”

All of the requirements, as described more fully below, must be satisfied.

1. Applicant Must Provide Evidence that the Applied-For Mark Will Be Perceived as a Source Identifier
Please discuss this section of the guide here.

a. Prior Registration(s) of the same Mark for goods or services in the same field of use as the domain name registration/registry services

The applicant must submit evidence that the gTLD shown in the applied-for mark is the subject of one or more currently active prior U.S. registrations for goods or services that are related to the identified subject matter of the websites to be registered via the applied for domain name registry/registration services by establishing:

1. Ownership of a currently active U.S. registration on the Principal Register for the same mark based on use in commerce under Section 1 of the Trademark Act ; or

2. Ownership of a U.S. registration on the Principal Register for the same mark based on either a foreign registration under Section 44(e) of the Trademark Act for which an affidavit of use in commerce under Section 8 of the Trademark Act has been accepted or a Madrid Protocol registration under Section 66(a) of the Trademark Act for which an affidavit of use in commerce under Section 71 of the Trademark Act has been accepted.

The submitted prior U.S. registration must show the same mark as shown in the applied-for mark. However, the lack of a “.” or “dot” in the submitted prior U.S. registration is not determinative as to whether or not the mark in the prior U.S. registration is the same as the mark in the application. In addition, the submitted prior U.S. registration must contain only the wording that makes up the gTLD, and must not include a disclaimer of such wording.…


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