Jessie N. Marshall
Administrator for Trademark Identifications, Classification, and Practice
U.S. Patent and Trademark Office
Washington, DC 20231
A trademark, as defined by the Trademark Act of 1946, as amended (15 U.S.C. 1051 et seq.) (also knows as the Lanham Act), is either a word, phrase, symbol or design, or combination of words, phrases, symbols or designs, which identifies and distinguishes the source of the goods or services of one party from those of others. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. Most activities on the Internet are considered services by the U.S. Patent and Trademark Office (USPTO), therefore, this paper will use the term service mark or, simply, mark throughout.
Having defined a service mark, what does it do and how is it treated by the USPTO. A service mark user has rights in that mark as soon as it is used in a service mark manner. Usually, those rights are limited to the geographic area in which the mark has actually been used and can only be enforced against people who may have started using a similar mark after that first user. While these rights are defensible in court, it is much more efficient and powerful to rely on a federal registration for that mark if one can be obtained. And how can one be obtained?
A U.S. service mark registration can be obtained by filing an application form with the USPTO accompanied by a filing fee, a drawing page and, if required, specimens showing how the mark is used in commerce. The USPTO gets its jurisdiction to perform its registration function from the commerce clause of the U.S. Constitution, so marks that are presented for registration in the USPTO can only be registered upon a showing that the mark is being used in a type of commerce that Congress can regulate. For a domestic U.S. applicant, this usually means that the mark must move across state lines in association with the service that it identifies. Movement between only two states is enough to satisfy this requirement. Foreign applicants, that is, applicants that are domiciled in a country other than the U.S., can file and register a mark in the USPTO without a showing of use in commerce by basing their U.S. application on an application or registration in their home country, provided that their home country is involved in a treaty with the United States that grants U.S. reciprocal rights in the other country. There are many such treaties in existence and a vast majority of countries have this treaty relationship. Of course, if a foreign applicant meet the requirements of use in commerce, it may apply based on that use as well. But back to the U.S. applicant and the use requirement.
Before the Trademark Law Revision Act of 1988, a U.S. applicant had to actually be using the mark in commerce before it could apply to register its mark in the USPTO. Beginning in November, 1989, as a result of the Revision Act, a U.S. applicant could apply to register its mark in the USPTO based on a bona fide intention to use the mark in commerce. The mark could not actually register until the applicant showed that it had made such use, but that showing could be made at a later time. A great advantage of using this "intent-to-use" provision was that the filing date of the application would become the effective use date of the mark if the application was successfully matured into a registration. This first use date becomes critical later in this discussion.
Once an application is received in the USPTO, it is assigned to an Examining Attorney for a review of the legal sufficiency of the application and the mark under the Trademark Act. The Examining Attorney reviews many points in the application, but the following are the most critical.
There are a number of grounds on which an Examining Attorney in the USPTO can refuse registration of a mark presented in a service mark application. A few of these issues can result in the application failing to register regardless of what the applicant may do to try to overcome these refusals.
The USPTO will not register marks that "consist of or comprise immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs or national symbols, or bring them into contempt or disrepute." 15 U.S.C. 1052(a) A refusal based on this section can only be over come if the applicant convinces the Examining Attorney that the mark is not immoral, deceptive, scandalous or disparaging. This refusal is subject to the prevailing moral standards of the country and USPTO officials. Marks that were refused registration under this section fifty years ago might not be so refused today. Whatever the prevailing moral atmosphere, it would be applied no differently to domain name service mark applications.
Neither will the USPTO register a mark that consists or comprises the flag or coat or arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof." 15 U.S.C. 1052(b) This section should not have a significant effect on people interested in registering their domain name with the USPTO since it is generally limited to graphic representations of a flag, coat of arms or other insignia.
The USPTO will not register a mark that "consists or comprises a name, portrait, or signature identifying a particular living individual except by his written consent or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow." 15 U.S.C. 1052(c) This section may be overcome by obtaining the consents referred to in the section itself.
Perhaps the most significant statutory refusal is the one that specifies that the USPTO will not register a mark that "consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office . . . as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake or deceive." 15 U.S.C. 1052(d) Note that this section requires that the likelihood of confusion between two similar marks must be determined in light of the goods (or services) identified by the mark. Thus, the USPTO will register the mark DOMINO for two different entities when one is using the mark to identify pizza and the other is using the mark to identify sugar. An applicant can overcome this refusal by arguing that there would be no confusion because the marks are dissimilar or the goods and/or services identified by the marks are not related to each other. The applicant could also buy the mark and registration from the registrant.
The USPTO will not register a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive of them or deceptively misdescriptive of them (e.g., the USPTO will refuse the mark SCREENWIPE for cloths used to clean computer screens), (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them or deceptively misdescriptive of them (e.g. the USPTO will refuse that mark DENVER for western-style shirts originating in Denver), (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them (this section is a result of the NAFTA treaty and, while similar to (2), there is a significant difference between them set forth in 15 U.S.C. 1051(f) that is explained below), or (4) is primarily merely a surname (the USPTO will refuse MCDONALD used in connection with anything) 15 U.S.C. 1052(e). The reason for these refusals is that certain words should be left in the public domain for use by all. Any producer of cloths used to clean screens should be able to refer to them as "screenwipes" without infringing someone else's trademark; anyone who makes western-style shirts in Denver, Colorado should be able to use the term "Denver" in reference to those shirts; and anyone with the surname "McDonald" should be able to identify their own goods or services with their own name.
Of course, McDonald's is registered for restaurants, hamburger sandwiches and a myriad of other goods and services and all of them are held by a single registrant. This brings us to 15 U.S.C. 1052(f) which allows for registration of marks that have been refused [except those refused under 15 U.S.C. 1052 (a), (b), (c), or (e)(3)] if they have become distinctive of the applicant's goods in commerce. This means that the applicant can show that the public recognizes these terms not just as descriptive, geographically descriptive or as a surname, but also as a word, symbol, etc. that identifies and distinguishes the source of the goods or services of one party from those of others. This public recognition is known as a showing of distinctiveness in the USPTO. At the very least, if an applicant claims that the mark has become distinctive of applicants goods and supports that claim with a showing that it has used the mark in association with the goods for the past five years, then the registration may be granted if there are no other unresolved issues. As indicated above, marks that have been refused based on NAFTA provisions [15 U.S.C. 1052(e)(3)], as well as those that are refused under various other sections of the Act, cannot invoke the benefit of this provision.
There is also the possibility of registering marks that have been refused under Section 2 (e)(1),(2) or (4) of the Trademark Act on the Supplemental Register. Marks that are capable of distinguishing applicant's goods or services from those of others but that have not yet become distinctive under the requirements of Section 2(f) (see above) can be registered on the Supplemental Register. A mark that is registered on the Supplemental Register can be the basis of a suit brought in federal court and it can be cited by the USPTO as a possible bar to the later registration of a similar mark used in connection with similar goods or services. A Supplemental registration can be used as the basis of a foreign filing under one of the treaties referred to above and the owner of such a registration can put the US trademark registration symbol on its packaging or advertising. However, there are a number of benefits that a mark that is registered on the Supplemental Register does not have that are present for marks registered on the Principal Register. Probably the most important right missing in a Supplemental registration is that it does not establish the registrant's exclusive right to use of the mark in the way a Principal registration. This may become significant when analyzing competing rights involving domain names and trademark/service mark registrations.
Finally, the USPTO will not register as a trademark or service mark a term that is found to be generic for the goods or services listed in the application. Such matter simply does not function as a trademark or service mark and cannot be registered under any circumstances because it does not fit the statutory definition of a trademark or service mark. No one may have rights in generic terminology alone.
There are a number of requirements that must be satisfied before an application is approved by the USPTO Examining Attorneys. However, unlike statutory refusals discussed above, statutory requirements may be corrected by merely complying with the requirements of the Trademark Act, if possible. For individuals seeking to register domain names with the USPTO the following requirements are the most significant.
The application for trademark registration requires that the applicant indicate the goods or services in connection with which the mark is being used. The USPTO requires that this description be clear and specific so that people who are not necessarily experts in that particular field of goods or services will understand the scope of protection of the mark in the registration. Once the goods or services are adequately identified, they are assigned a numerical classification. The system used in the USPTO is taken from the International (Nice) Agreement. This is an international agreement that sets out 34 classes of goods and 8 classes of services. All of the countries that adhere to this agreement (and many countries that are not adherents but are users of the system) organize their trademark offices according to this classification system. For example, in the area of goods, Class 1 is for chemicals, Class 2 is for paints, Class 3 is for cosmetics and pharmaceuticals and so on through Class 34 which covers tobacco products. In the area of services, Class 35 covers business-related services, Class 36 covers financial services and so on through Class 42 which is a class for miscellaneous services and very often will be used for generalized computer-related services. To satisfy this requirement, the applicant must define and classify its goods and/or services as suggested by the USPTO so long as any suggestions are accurate in reflecting the true nature of the goods or services to be covered by the application.
The second issue that becomes extremely significant to those who seek to register their domain names with the USPTO really combines two inseparable requirements. As indicated above, a trademark application must include a drawing page. The term "drawing" is used very loosely in the USPTO. Merely presenting typed words on the drawing page is perfectly acceptable. However, that "drawing" page is mandatory whether the mark consists of words only, design only or words and design. The mark that is shown on the drawing page is the mark that will appear on the registration certificate, should it issue. Also, as indicated above, the applicant must claim use of the mark in commerce and provide specimens showing how the mark is presented to the relevant public. The mark as shown on these specimens must agree with the mark as presented on the drawing page.
Generally, a drawing cannot be changed if the change would materially alter the mark that was originally presented. A material alteration is considered one that would require the Examining Attorney to perform a new search for possibly confusingly similar prior registrations or that would give a different commercial impression to prospective purchasers. Such changes are not allowed because business people rely on information about pending applications in the USPTO and significant business decisions are made based on that information. The public would not be served if the USPTO allowed a mark such as WIDGET to be changed to FIDGET WIDGET. Perhaps someone had decided to go forward with the mark FIDGET based on the fact that there were no similar marks pending or registered in the USPTO only to find out that the mark it had hoped to register had been added to a prior-filed mark after the FIDGET company applied for its own registration.
Generally, the USPTO has tried to apply traditional trademark law to the examination of domain name service mark applications. Concerning the first three possible grounds for statutory refusals (immoral, scandalous or disparaging matter; flag, coat of arms or other insignia of a country; name or depiction of individual without consent or of a deceased U.S. president without his widow's consent), traditional trademark law can be applied with very few variations or problems. In fact, the very significant likelihood of confusion statutory refusal is also easily applied. There are, however, some conceptual problems in considering the statutory refusal grounds of descriptiveness, geographic descriptiveness or deceptive misdescriptiveness, and surnames.
When a second level domain name is applied for with some or all of the leading computer protocol indicators or with a first level domain name, the Examining Attorney must determine the weight to give those elements under Section 2(e) of the Act, 15 U.S.C. 1052(e) (i.e., descriptive, geographic, surname significance). The USPTO has tried to adapt its well-established practice in the registration of 800 telephone numbers to the area of domain names. If an applicant applies to register a mark which consists of a merely descriptive or generic term with numerals in the form of a telephone number, for example 800 or 900 followed by a word, the Examining Attorney will refuse registration on the grounds that the matter presented for registration is describes the service being offered by means of that telephone number. If the word portion of the telephone number is merely descriptive and not generic, the mark may be registered on the Principal Register with a proper showing of distinctive. If the word portion of the telephone number is generic, the mark is unregistrable. The same would hold true for domain names. If the second level domain name is generic for the activity offered at that web site, the mark is unregistrable. If the second level domain name is descriptive, the mark may be registered with a showing of distinctiveness. If the second level domain name is arbitrary or merely suggestive of the activity offered at the web site, the name may be registered as a service mark without a showing of distinctiveness.
There has been a great deal of controversy about the identification of services rendered on the Internet and the classification of those services. This controversy is international in scope. In the fall of this year, there will be a meeting in Geneva, Switzerland at the World Intellectual Property Organization, the U.N. agency that administers the International (Nice) Agreement to discuss and harmonize the classification practice regarding these services and any goods that may relate to them. Until that time, however, the United States has had to develop a policy to follow in this area since we have received so many applications that must be dealt with before that international meeting. The USPTO policy is set forth in a position paper that can be found at our Web site (www.uspto.gov). It is entitled "Classification of Computer Services and Associated Policy." Rather than go into that degree of detail here, that document is appended to this paper. Domain names may be used to identify some of the services discussed in that policy statement.
Domain names are often used like telephone numbers and addresses. They are often printed in small letters on business letterhead stationery, business cards or advertisements in the same way addresses and telephone numbers are presented. In their purest form they provide information as to how to contact the entity, rather than as identifiers of a service. Specimens of this type will be refused in the USPTO because they do not show service mark use of the matter presented for registration. 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 USPTO as functioning as a service mark and not just as contact information for a particular entity. The domain name must be used as a source identifier and not just as an entity locator.
Some uses that may qualify as good service mark use of domain names include hard copy advertisements for a web site in which the significant portion of the domain name has been highlighted or set off in some other visual way. Also, on the web site itself, the domain name used as a banner headline or magazine masthead would probably be seen as functioning as a service mark. To provide these computer-generated specimens to the USPTO, the applicant may either take a picture of the computer screen that shows the mark or print out the screen itself.
Perhaps the domain name applicant has presented perfectly good service mark use of its domain name. Now the Examining Attorney in the USPTO must look at the drawing that was submitted with the original application. Does the drawing include the computer protocols? The www portion? The .com portion? If so, does the specimen submitted match that drawing presentation? If it does not, can the drawing be changed to coincide with the presentation of the domain name/service mark on the specimens?
The problem the USPTO must solve now is whether the addition (or deletion for that matter) of the computer protocols from a drawing is (1) necessary when the specimens show the mark as actually used in a form different from the drawing or (2) permissible without violating the prohibition against allowing material alterations. If an applicant applies for the second level portion of its domain name, would the USPTO find that the mark differs so substantially from specimens showing the entire domain name that the specimen must be found to be unacceptable? Or will this specimen support the use of the second level domain name and any portion of the rest of the domain name as the mark presented for registration? If the USPTO were to find that the extraction of a portion of the domain name results in an impermissible 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. Most of the domain name service mark applications filed in the USPTO were based on the intent-to-use provisions of the Trademark Act, therefore, they did not have specimens of use filed with the original applications. As these specimens come into the USPTO we will be in a better position to develop a policy in this area.
With the implementation 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. However, the ambiguities and problems that have arisen with the policy and how it effects or is effected by trademark or service mark registrations are many. The USPTO has very few answers to these questions, but what follows is a sampling of inquiries that have been received concerning this issue. Where there is an answer, it will be presented; where no answer has been formulated, that will be indicated as well. (All domain names are hypothetical--if they actually exist, this paper does not intend to refer to the real domain name. Some questions were taken from actually inquiries made to the USPTO. While any specifying material has been sanitized, much of the wording of the original questions have been left in tact.)
Question: A small company is being threatened with suit because they have the domain name of XYZ.COM. XYZ is the abbreviation for the small company. They write software that translates Nuclear Image data from one manufacturers format to another manufacturers format. They are threatened by a large company called XYZ (which makes goods that are rather different than the software made by the small company) with many $s and the small company can afford neither the time nor money to take on the large company.
They have been using Internet and the name for two and half years--long before the Internet went commercial and have never received any misdirected e-mail or queries dealing with the goods made by the large company. The question is--Is there any organization in the government or private domain that provides assistance to small companies or individuals (Davids) to fight Goliath; how is it that the big company can force the Internet provider to stop providing service to the small company before the case is litigated? What real basis does the big company have to claim Trademark infringement?
Answer: Unfortunately there is no specific organization that can help--either public or private. However, many attorneys do take on pro bono cases (means "for good"--they do it to help out and don't charge much if anything--this is a rather hot topic in the law and someone may be willing to take it on for the experience). This information can be obtained from a local bar association. Also, law schools often provide advice and, depending on the legal practice laws of the state, the law students can provide legal representation on a limited scale. Check with any law schools near-by to see if they have such a program. They, too, would charge little or no fee for these services.
There could be an infringement problem. This area is still very vague and is evolving with each new problem that comes up. Private trademark counsel should be sought--sometimes an attorney will take on a case like this just to have a chance to fight the Goliaths of the world.
Question: A business owns ABC.COM for its domain. It is both a reseller of computer memory and a manufacturer of computer memory. A large toy manufacturer makes a card game called ABC and that is trademarked so they claim to have the rights to the domain.
Answer: The inquirer asked for an opinion on this question. The USPTO is not permitted to provide opinions and the person advised that this situation had to be resolved between the parties. However, this is the classic case contemplated by the Domain Name Dispute Policy.
Question: How far (geographically) does trademark protection extend? Is it effective world wide or just by country?
Answer: A trademark registration is only good in the country in which it is registered. The new European Community mark is a little different, but a mark from that office would be valid only within the community countries. There is no true international protection. It has to be done country by country although the World Intellectual Property Organization in Geneva makes it easy to file in a number of countries. Still, registration and protection depends on individual countries.
Question: A law firm has had the domain name XXLAW.COM for almost two years. It just become aware of another law firm with the domain name XLAW.COM and there has already been at least one instance of actual confusion, which has lead to consider registration of our domain name. The XLAW.COM domain was registered in February, 1996.
Would the USPTO view XLAW.COM as descriptive? If not, what sort of specimens would be acceptable. The USPTO policy statement at its web site states that letterheads and cards are not acceptable. What about screen shots that would show the URL? The law firm also put the domain name and URL in printed memos discussing Internet-related legal issues.
The firm specializes in xylophone law; thus, we adopted the XLAW.COM domain because it describes what we do and seemed easy to remember.
The law firm indicated that it understood that any guidance provided by the USPTO is not binding on the USPTO and that an examiner or reviewing authority might take a contrary view.
Answer: (Most of these issues were discussed above.)
The USPTO is analogizing domain names with 800 telephone numbers.
If XLAW is not considered descriptive of xylophone law (a recognized
shortened form), the XLAW.COM domain name could be registrable.
However, registering with our office may not help with confusion
on the Internet with XXLAW.COM. The USPTO would probably find
a likelihood of confusion between XXLAW.COM and XLAW.COM.
Question: It seems that "he who has the most money wins" in this area of domain names and trademarks.
This individual has paid lots of money to secure a number of names (i.e. SMITH.COM) which it intends to use merely as an e-mail address site (i.e. john@smith.com for persons wishing to have an e-mail address behind a site name that is recognizable to some as the rock group Smith.
The question is can SMITH.COM be registered as a trademark for use as an e-mail registration site? The site would contain nothing at all about well known Mr. Smith or his rock group. Can a surname be registered as a trademark? Before spending $250 per trademark x 100 names, could this situation be made a bit clearer. After applying and paying, if the trademark is not granted, the money is not refunded, right?
Other questions come to mind about this subject. What if you are Sinbad the comic and you wanted the name SINBAD.COM and someone else to promote the message that sin is bad and wanted the name to be short and easy to remember so it's called "sin bad" (SINBAD.COM) Who has the right?
According to the Domain Name Dispute Policy even if someone else was the first one to get the name from them, as long as Sinbad has a registration on his name he could get the domain name put on hold or could the first domain name registrant get SINBAD.COM. registered as a trademark because it created a whole new phrase?
If someone lived on 1234 Frank Sinatra Drive in Palm Springs, California, would Frank Sinatra have the right to prevent him from publishing that address? After all, is not "Drive" an extension of Frank Sinatra and the protocol for numbers in front of the name, the same as http://www.franksinatra.com or john@franksinatra.com?
Answer: (Once again, much of this requires legal advice, but some answers are possible. And, once again, much of this information was discussed above.)
A surname can be registered as a trademark if the applicant can prove to the PTO that the public recognizes the term not only as a surname but also as the identifier of the source of particular goods or services. This is done by offering evidence of advertising that promotes the term in connection with the goods or services and other similar material. In trademarks, we determine likelihood of confusion based on both the mark and the goods or services identified in the application. Therefor, in your Sinbad example it is possible that Sinbad for comic books and Sinbad for an organization the promotes moral behavior could co-exist on the trademark register. However, InterNIC is not controlled by trademark law or concepts. The subject matter of the site is not taken into account.
The analogy between the street address and the domain name or e-mail address is an interesting one. However, the USPTO would not register a street address as a trademark or service mark unless it was used as one. As discussed above, the same applies to domain names and even e-mail addresses. As far as a street address being the name of a famous person, if the street address (used as a mark) is not intended and, in fact, does not create an impression that the famous person is affiliated with the goods or services offered under the mark, it might be able to be registered in the USPTO without a refusal by an Examining Attorney and without a challenge by the famous person.
Question: A business has a mark that is registered on the Supplemental Register. It is a combination of words and design elements. The word is pretty clearly generic and that's why it's on the Supplemental Register to begin with. Now there is a domain name that uses that generic term. The trademark registration owner wants to stop it. Can it do that?
Answer: Even though a registration is on the Supplemental Register, it is still a federal registration. There are some limits to the scope of protection that may be provided by a Supplemental registration, but registration on the Supplemental Register is not to be taken as an admission by the registrant that the mark has failed to become distinctive of the goods or services listed in the registration. However, it may serve to put the domain name on hold under the Domain Name Dispute Regulations.
It is unclear how this situation would come out in court. Both sides have valid arguments. On the side of the domain name registrant, the term in question is generic and no one should have any proprietary rights in a generic term. On the side of the U.S. trademark registrant, the registration is valid and they have superior rights in the words and designs as they are used in the registration and, on the strength of the registration, can keep other entities from using the words and designs in precisely the same manner as the trademark owner has used them in its registration. Clearly, the weakest part of the registration is the generic wording, yet, it is still part of the registration.
The USPTO doesn't particularly need additional trademark and service mark applications to keep it busy--it received over 170,000 applications last year alone. But if, after this presentation, domain name holders feel that their name may qualify for service mark registration, the USPTO is ready to examine their applications. Application forms may be found at the USPTO web site (http://www.uspto.gov). They are contained within the document "Basic Facts About Registering a Trademark". Visit the site and download the forms. The USPTO will help as much as it is permitted by law.
Trademarks have been around since early humans put ownership brands on livestock and clay pots. Domain names have been around for a few decades at the most. Each one serves different purposes but there is certainly an area where those purposes overlap. It is doubtful whether the rules in that area will ever become crystal clear. There will always be unanswerable questions and questionable answers. But over time, the intersection will become clearer, more questions will have answers and more answers will become (relatively) unequivocal.
(originally presented on the USPTO web site at http://www.uspto.gov)
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? To refer to a well-publicized situation, would a PTO registration for MCDONALDS be able to be presented in a dispute with the domain name registration MCDONALD? And finally, is any attention paid in the dispute to the goods or services set forth in the PTO registration. Would a PTO registration for athletic shoes have any effect on an NSI registration for the same term for a web site providing information about business opportunities in Greece? 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.
Class 9: Pre-recorded software in hard form (CD-ROMs, diskettes, magnetic tapes, etc.) are in this class with an indication of the subject matter or function of the software. The subject or function must be detailed and specific. Very broad statements of function such as "computer programs for business use" are not acceptable. Of course, computer hardware is in this class.
However, software that is down-loadable from a computer network is considered a service since there are no hard goods received from the supplier. The service is providing the software on a global computer network. Subject matter or function of the software must be indicated, but the service of providing it is in Class 42. An acceptable ID in this area would be "providing computer software [indicate specific subject or function] that may be downloaded from a global computer network." The same of specificity of subject matter or function is required in this situation as is required for the hard goods in Class 9.
Class 16: As with software in Class 9, only hard copy is considered Class 16 goods. Magazines or books that are downloadable from a computer network are not hard goods and are not classified in Class 16. Publications that are down-loadable or viewable by means of a computer network is considered a service since there are no hard goods received from the supplier. The service is providing the publications on a global computer network. Subject matter of the publications must be indicated, but the service of providing it is in Class 42. (See Class 42 discussion below.) This topic is also discussed in the Examination Note of June 19, 1995 which may be found in the Notices section of the FolioViews ID Manual on PTONET.
Classes 35, 36, 37, 39, 40, and 41: Any activity consisting of a service that ordinarily falls in these classes (e.g. computer games, various financial transactions), and that happens to be provided by means of a global computer network, is classified in the class where the underlying service is classified. For example, banking services are in Class 36 whether provided in a bank or on-line by means of a global computer network. Similarly, the service of providing information by means of a global computer network is classified in the class of the information subject. Entities who offer these services by computer are considered "content providers", that is, they provide the informational or substantive content of a web site and/or home page. If an entity provides information in a wide variety of fields, this must be reflected in the identification and the service may be classified in Class 42 (e.g., providing information in a wide variety of fields by means of a global computer information network.)
These rules also apply to activities in Classes 38 and 42, however, the comments below also apply to Classes 38 and 42.
Class 38: Provision of telecommunications connections to a global computer network. These services are purely telecommunications connections such as those provided by AT&T, MCI or other telecommunications providers. It is ONLY the technical means by which one computer can communicate with another. It is NOT providing the computer technology that transfers the data; it is the means by which that data is transferred. This service connects the user to the "link provider" (see Class 42 discussion below) or the web site itself.
Class 42: Providing multiple-user access to a global computer information network for the transfer and dissemination of a wide range of information.
Leasing or providing access time to computer databases/web sites/home pages of others in the field(s) of [indicate specific field(s) or subject matter ] by means of a global computer network.
This language covers those services provided by entities such as America Online, Prodigy and CompuServe. They provide the computer connection (often using the telecommunications services of other entities as described above in Class 38) that enable a computer user to access the databases and home pages of others. These entities are considered "link providers" in that they provide the computer connection needed for a computer user to access a content provider. The word "access" should be limited to these services and should not be used in describing the service of a content provider.
A single entity may provide one or a number of the services described above. However, each service must be properly identified and classified even though they may be provided by a one applicant.
If an entire magazine or other publication is presented at a web site, the computer service of providing that publication electronically is considered the primary service involved in this activity. 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. As with Class 16 publications, the subject matter of the publication does not effect the classification of this service.
General comments:
There are distinct and significant differences among the services offered by the telecommunications connection providers, the "link" providers and the "content" providers. The identification of the services should accurately reflect activity offered by the applicant. Unfortunately, this accuracy depends in large part on the manner in which the service activity is expressed, so great care should be taken that language that describes a "link" provider activity should not be used to describe the services of a "content" provider.
The term "Internet" is still the subject of a proceeding at the Trademark Trial and Appeal Board. Therefor, this term should not be used in identifying any goods or services connected with this global computer information network. Language such as "global computer information network" or a substantive equivalent should be used instead of the term "Internet."
The same is true of the phrase "World Wide Web", although the controversy has not ripened into a TTAB proceeding. There are conflicting applications involving the phrase, therefor, it should be avoided in identifications of goods or services. Phrases such as "web sites," "web pages," "home pages," or "global computer information network sites" may be used instead of "World Wide Web."
The term "multimedia" merely describes how an activity or goods are presented in their electronic form. It is not specific in itself to identify goods or services. Thus "software in the field of multimedia" is unacceptable in Class 9 to describe recorded software and "multimedia information services provided by means of a global computer network" is too vague to identify a service activity.