Top level domain trademark application denied because it fails to function as trademark. IN RE AC WEBCONNECTING

Top level domain trademark application denied because it fails to function as trademark. IN RE AC WEBCONNECTING

A trademark is something that consumers associate with the manufacturer of a product.  Traditionally a trademark is thought of as a symbol, word or phrase, but anything that signals to consumers the identity of the manufacturer of a product can be eligible for trademark protection.  In the United States trademark rights are derived from the use of the trademark in commerce.  A trademark can be registered with the United States Patent and Trademark Office to strengthen the rights associated with the trademark but registration is not necessary for the trademark user to be granted a claim to the trademark.

When a trademark is successfully registered with the Untied States Patent and Trademark Office, the trademark is placed on either the principal register of the supplemental register.

The Principal Register is for trademarks that are distinctive, either because the trademark has unique characteristics or because the trademark has been used for a long time. A trademark which is not being used in commerce yet can be placed on the principal register.  The Supplemental Register is for trademarks that are descriptive.  Only trademarks that are currently in use in commerce may be registered on the supplemental register.

To be placed on either register, however, the trademark must meet certain requirements.  One of those requirements is that the applied for trademark functions as a trademark.  If a trademark application is filed  to register something which does not indicate the source or origin of the identified goods or services and distinguish them from those of others does not meet the statutory definition of a trademark and may not be registered, regardless of the register on which registration is sought.

IN RE AC WEBCONNECTING HOLDING B.V. Serial Nos. 85635277 (TTAB 2020) is an example of a trademark application that was denied because the applied for mark failed to function as a trademark.

In 2011, the Internet Corporation for Assigned Names and Numbers (ICANN), the organization that helps organize website names on the internet, introduced numerous, new generic top level domains (gTLDs).  TLDs are the set of three letters at the end of a website. The applicant in this case is the registrar whom ICANN granted the right to regulate the “.cam” gTLD.  Applicant filed an application to register .CAM as a trademark on the Supplemental Register.

The Trademark Examining Attorney refused the application under Section 23 of the Trademark Act of 1946, 15 U.S.C. §1091, on the ground that the .CAM designations do not function as source indicators and are incapable of distinguishing Applicant’s services from those of others or indicating the source of Applicant’s services.  Applicant then appeal to the Trademark Trial and Appeal Board.

In its opinion the TTAB noted that a TLD in combination may be capable of functioning as a trademark.  However, court precedent has made it clear that this general rule.  TLDs by themselves are similar to the suffix Corp or LLC to indicate the structure of a business and not the source of a product.  Applicant acknowledged that its application consisted solely of a gTLD, but argued that it was using the .CAM as a trademark to promote services.

The TTAB was not persuaded by this argument.  The TTAB noted that the applicant’s website uses .CAM to refer to a gTLD and not as a trademark associated with any of its recited services. It also is clear from Applicant’s website that .CAM is intended to be used by multiple parties as part of their domain names to identify multiple websites offering multiple goods and services.

The TTAB concluded that .CAM is incapable of functioning as a trademark to identify and distinguish Applicant’s services from those of others and therefore affirmed the refusal.

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