The Trademark Trial and Appeal Board’s (TTAB) in In re theDot Communications Network LLC held that the proposed mark, “.MUSIC”, was not registrable because the mark was descriptive of the prescribed goods and services and upheld the Examining Attorney’s refusal for all five applications related to the mark. At its core, the decision seems specifically tailored to stop people from trying to do an end-around the new gTLD program by pre-registering trademarks which cover the prospective gTLD.
Although Applicant argued that other top level domains such as .travel, .nu domain, and dot fm, are already registered with the USPTO, the TTAB reasoned that the difference between those gTLD’s and .music was that the environment for registering domains as trademarks was different then than it is now because of the new gTLD program, stating that: “[t]his finding is 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.”
The TTAB’s reasoning here seems plain – it does not want people attempting to do an end-around the new ICANN program by allowing pre-emptive registrations, and creating trademarks or service marks which are going to be confused with the goods/services which the new gTLDs are going to be associated with. If the TTAB allowed this there could be a flood of applications for marks covering other generic names/terms to pre-empt the new gTLD program, and a lot of confusion in the marketplace.
Even so, the TTAB’s logic in some parts of its decision seems to cut against its own norms and raises some interesting questions as to the scope of its decision.
First, is .music special? The TTAB explained that in its view the situation with .music is different because there is a group which has already publicly proclaimed its intention to own the .music registry and started work on this. Does this mean that other terms which would normally be considered arbitrary in association with online services can be registered only if there is no similar group that has publicly declared its intention to apply for and own the new gTLD for that term? What about groups that have decided to keep their intentions quiet until the registration period for the new gTLD’s actually opens? Does this put them at a disadvantage in terms of allowing potential third parties to co-opt their name?
Second, what is the significance of the dot? The TTAB noted that the Examining Attorney “dismissed the period at the beginning of the mark as mere punctuation that does not alter the commercial impression of the mark…”. However, the dot actually seems to be vital in this case – what if the applicant was simply trying to register the mark MUSIC – no dot? Would that make a difference? Without the dot there is no reason for the public to make an association with a domain registry. The TTAB noted that there is a “likely public perception of .music as a top-level domain associated with the field of music”, but there does not seem to be any basis that the same could be said of the plain term “music” without the dot.
Lastly, the part of the opinion where the TTAB discussed why third party registrations of existing TLD’s had little value as supporting evidence for applicant in light of the present “marketing envirornment” is really a strange way of saying “your mark was probably not descriptive before, but it is now.” But what if the new gTLD program is delayed? Congress is discussing it right now (as I type). Could the applicant reapply and get a different answer?..