Wake up and smell the music!

There was an important decision in the TTAB — so important that it’s “precedential” even, if you can imagine!  As John Welch explains, the TTAB came to the conclusion that, well, things change, and what was once a good idea is not such a good idea in the present.  That idea was permitting registration of top-level domain names as trademarks, and it came up in the context of the TTAB affirmed a refusal to register the purported mark .MUSIC for domain registration and hosting services, various computer-related services, and music-related goods, on the ground that the mark is merely descriptive under Section 2(e)(1):

The Board’s ruling was based “on the current marketing environment which is different than the marketing environment when many of the third-party registrations relied upon by applicant were issued.” In re theDot Communications Network LLC, Serial No. 77622942, 77622944, 77622945, 77622947, and 77622948 (November 22, 2011) [precedential]. . . .

Applicant . . . argued that the PTO has a practice of allowing registration of top-level domains, including such ICANN-accredited TLDs as dotam, dotfm, .travel, .nu domain, and dotCoop, as well as non-accredited but proposed TLD strings. It noted that “[a]ll of these include domain registration services, and may include a much broader variety of online services.

The Board, however, observed that the situation has changed since 1989, when the first few TLDs were created. In 2000, a dozen more were announced, another one in 2005, and in 2010 the .xxx TLD was approved. Furthermore, in 2011 ICANN announced that “it would greatly increase the number of top-level domains by allowing nearly any new name in any language.”

As a result, the Board noted, there are groups seeking various top-level domain names, including a group (unaffiliated with Applicant) that is seeking the name .music, which is intended for use by musicians and the music industry. The Board concluded that the public will perceive .MUSIC “as a top-level domain associated with the field of music because there has been a concerted public effort to build support for its use as a top-level domain in this field.”

And because .MUSIC sounds pretty descriptive of “websites having to do with music,” of course.  John asks how broadly this decision should be taken, besides being precedential.  Does it announce some new principle, or is it just what it is?  Marty Schwimmer does not hesitate to answer that:

This holding, if affirmed, would put the kibosh on pretty much dot anything.  My suspicion is that a lot of would-be TLD operators are filing in that form to protect their intended trading name, but perhaps to cause some mischief with those who are awarded that particular TLD over them (question: if this applicant had received a registration for .MUSIC covering domain name registration, what rights would it be able to assert against a third-party that was awarded a .MUSIC TLD?).

The right question:  I say, none.  And that’s why I called it a “purported trademark.”

People just don’t understand that registering things and even getting registrations for things doesn’t really make them trademarks.  Yes, yes, that’s why you can’t “trademark” something.  It’s hardly surprising that “people” don’t understand that.  But lawyers?

“Purported lawyers”?

Okay, that’s not fair.  You can be very much a lawyer and sign off on a position that isn’t justified in an absolute or abstract sense but which falls short of being frivolous.  Especially because so many positions like that … work.

After all, there are 472 federal opinions on Westlaw using the word “trademarked” … issued just in the last three years.  And far be it from me to say anything “purported” about a judge!

Originally posted 2013-03-21 13:15:20. Republished by Blog Post Promoter