Does the public really want new generic top-level domains (gTLDs)?

Most people that use the Internet are familiar with the generic top-level domains (gTLDs): .com, .net, etc., and use them on a daily basis. These gTLDs have gained a level of cachet, and are more commonly used than country specific domain names (e.g. .co.uk or .jp) by companies. In the past, users traditionally would use a search engine to find a website for a company. Now most users simply add ".com" to the company's name (or trademark) to find the website. Due to the popularity of .com, most of the "desirable" domain names are already registered. It can be difficult to register a new domain name in the .com space, unless it's something bizarre (sdfjhdskjfhsdwh.com) or unwieldy (like joeswestlosangelesrestaurantandbar.com rather than joesbar.com).

Because of the desire to have simple, easy to remember (and search engine optimization-friendly) domain names, a number of attempts have been made to create new gTLDs (such as .jobs, .mobi, and .biz). These new gTLDs have not been widely adopted or successful, and there are some indications that they are not profitable in the long term. New gTLDs pose risks to trademark holders (who likely already have registered the .com, .net, etc. version of their trademarks), and thus they often register their marks in the new gTLD (even if there is no intent to use the new domain name).

The logic is that it is cheaper and easier to register a domain name in a new gTLD than to have a competitor or cybersquatter do so (and thus have to litigate or use other methods to recover the domain name). Most new gTLDs have a sunrise period when trademark holders can preregister their trademarks- sometimes necessitating payment of hundreds of dollars in addition to registration fees. I have heard grumblings from my trademark colleagues that this is the only time that new gTLDs are really profitable. Observing how little these gTLDs are used and/or promoted, I tend to agree.

In spite of this, domain name registrars are convinced that new gTLDs (such as .sex, .berlin and .nyc) are desperately needed. If you have attended an ICANN meeting in the past decade (I have), this very vocal group constantly has pushed for allowing their gTLD to be accepted, or for opening the gates wide open and allowing for pretty much anything to be setup as a gTLD. It looks like ICANN got sick of the complaining, and has decided to implement unrestricted gTLDs.

Let's just say that this decision scared the hell out of trademark holders. They imagine having to register their marks in dozens (hundreds?) of new gTLDs each year, maybe costing upwards of tens of thousands of dollars annually (for domains they have no desire to use). I work for such a trademark holder, and I agree with them. I have no idea how much it will cost, and question why we need all of these domains.

ICANN recently brought on a new president, Rod Beckstrom. In an interview with the Washington Post, Mr. Beckstrom said:

ICANN is simply asking the global community of IP attorneys and others to develop the best possible solutions they can which can actually be implemented. But one of the solutions is not avoiding the gTLDs, because there's tremendous demand from all over the world to have those, and the number of companies who are opposing them appear to be a minority compared to those who think they should be out there and present.

I added the emphasis. Yes, Mr. Beckstrom says that the public is clamoring for these new gTLDs. I was shocked to read this. I have been a server administrator since 1993 (when I ran my college's Gopher server), first professionally then as a hobby (I still administer the server hosting this blog). I am a rare attorney that actually understands and has worked to administer the underlying technology of the Internet. I am, for lack of a better description, a computer geek that spends a lot of time using and learning about the Internet.

I have not heard of a single general Internet user demanding new gTLDs. Most users do not even know what a gTLD is. The only time I have heard anyone demanding opening up new gTLDs is by domain name registrars and other companies that would make money from the registration of new domain names.

So, I decided to research if the public really is excited about new gTLDs. Not surprisingly, there was little info out there on this. I did, however, find one survey that was actually conducted by a registrar (Gandi Bar). The results are telling:

The majority of consumers polled (60%) agree that the liberalisation of domain name extensions will change the way they use the Internet, but not for the better. The sceptical amongst them believe that the Internet will become full of pointless domain names (for 65% of the people polled), messy and confusing (57%), too complex to navigate (46%) and out of control (41%).

Consumers muster little enthusiasm for any new top-level domains. A quarter of people are ambivalent about the prospect of a .music suffix and 28% would be wary of domains ending with .theirprofession. Just 15% think this sort of suffix would be appealing. Consumers are most suspicious of extensions linked to porn and religion. A massive 84% of consumers think .sex is dodgy, and two thirds think .god is suspect.

This registrar is admitting that the public doesn't want these new, and likely confusing, gTLDs. Gone will be the days when you can add .com to a trademark or company name to find their website, you'll have to poke around through search engines to find them. The public understands this, and doesn't want this.

I decided to contact Mr. Beckstrom about his comments. Mr. Beckstrom, to his credit, is easy to contact online (he followed me back on Twitter and responded to my email within a day). I asked him how he could reconcile his statement with the survey I quoted (along with my own personal observations and experience). I told him that I, as an attorney with a company that has a very important trademark portfolio, would work with ICANN if we knew that the public really wants these new gTLDs. If it's just registrars and not end users who want this, then obviously we trademark holders have some legitimate concerns about costs and loss of trademark rights.

Mr. Beckstrom replied that he received my email, appreciated my feedback, and would follow up once he had time to review my request. That was July 6, 2009- I'll post again when I hear back from him.

Thanks to Ron Coleman for inspiring me to write this post.

Facebook to launch usernames: reserve your trademark now!

As some of you may know, Facebook has been testing usernames for its accounts. Previously accounts were identified through a user number and name, and thus URLs for Facebook pages would look like: www.facebook.com/people/Owen-Smigelski/714352306.

Facebook announced on June 9 that on Friday, June 12 at 9:01 PM (Pacific), username registration will go live for all users. This will allow for a simpler user page such as www.facebook.com/owen.smigelski (however I personally hope to register as “owen”).

This could pose a problem for trademark holders, with the classic Web 2.0 foible of third parties registering trademarks as usernames. Facebook has attempted to address this, and has a form entitled “Preventing the Registration of a Username” for trademark holders. The form is at: www.facebook.com/help/contact.php?show_form=username_rights

There are a few unanswered questions about this form:

(1) Will I receive an email confirmation of my submission (I did not receive one although I submitted the form about 20 minutes ago)?
(2) Will I receive confirmation that my request has been processed/accepted?
(3) Will my company be able to use the reserved username for our own company’s official product page on Facebook?
(4) Can non-Facebook users utilize this form to prevent registration of a trademark as a username?
(5) Will company product pages be able to register for usernames as well?
(6) Is there a limit to the number of trademarks that can be reserved (the form only allows for the entry of one mark/reg. no.)?
(7) Can a trademark registration entered in the form be for any jurisdiction (including ones which may not be easily identified online?)
(8) What will happen in the event that multiple parties reserve/attempt to use the same trademark term?

Some credit is due to Facebook for establishing this trademark reservation system, however in light of the impending deadline, trademark holders need to reserve their marks ASAP.

Good luck,

Owen

New job

It's been a little while since I've posted- I've been busy with work, and interviewed for a new job. I will be moving from my current law firm job to an in-house position with Sunrider International. I will be the senior counsel for intellectual property, and be responsible for the company's worldwide I.P. portfolio. Although I will miss litigation, I will be at my dream job- focusing solely on worldwide I.P. I look forward to the new position, which I will be starting on June 25. My updates will be sporadic until then, but once I'm settled in my new position, I will start updating the blog again.

Church symbol trademarks

I read an interesting article today regarding a trademark dispute brewing (sorry for the pun) in Utah involving coffee, clothing, the angel Moroni, and the Church of Jesus Christ of Latter Day Saints (aka the Mormons). The article is entitled Church Trademark Used to Sell Coffee Shop T-shirts.

The dispute involves a coffee shop in Taylosville, Utah called Just Add Coffee. The individuals decided to sell a t-shirt and greeting cards that utilize images of an angel. They drew unwanted attention by using a specific angel- namely the angel Moroni. For those of you not familiar with the Mormon faith, Moroni was the angel who told Joseph Smith (the founder of Mormonism) the material that would become the Book of Mormon. Moroni had some golden plates upon which were inscribed these words of god. A picture of Moroni is to the right, and it is Moroni from which the term "Mormon" is derived. Moroni is thus one of the fundamental pillars of the Mormon faith. Each Mormon temple that is constructed has a gilded statute of Moroni, facing Salt Lake City, Utah, and blowing a trumpet. I am not an expert in Mormons, but I imagine that each statute of Moroni looks different-- and an example is provided to the left.

The Mormons have decided to take issue to the use of the angel Moroni in conjunction with apparel and stationary relating to coffee. They claim trademark rights to the image of Moroni, and have requested that Just Add Coffee cease all use of the angel image (to which Just Add Coffee has stopped using the image).

I think the Mormons have a very weak case, and that Just Add Coffee should continue using their design. Can one have a trademark in a symbol that represents a religion? Where does this end- will the Mormons police all use of the name? Will they stop all use of the beehive (another symbol associated with Utah and Mormons) image? This is the same as the Pope asking people to stop using images of the cross or Christ in their names or logos. Similar arguments can be made for the Star of David or the Crescent Moon. Furthermore, there does not appear to be one image of Moroni that is always used, thus it appears they're claiming rights to any guy blowing into a long horn. I've seen similar representations in artwork, architecture, and products elsewhere- so the Mormons have perhaps not been diligent in enforcing their alleged trademark. This enforcement of trademark rights can also extend to all individuals that use images of the Moroni statutes, which I suspect includes a significant number of tourist related information (guides, postcards, books, movies, etc) and other "unauthorized" uses of the angel Moroni.

I suspect one main issue the Mormons had was the use in conjunction with coffee, which the Mormons forbid. Additionally, this is a store located in Utah, where individuals are more likely to be familiar with the representation of the angel Moroni. The Mormon church may not want individuals assuming that Just Add Coffee is associated with, or approved by, the Mormons. While certainly valid reasons, I do not believe that Just Add Coffee should stop their use.

No immoral or scandalous trademarks

A client of mine recently asked to register a trademark that included what one would consider a "bad word." The word in question rhymes with "duck."* I advised my client that there is no way to register such a word through the United States Patent and Trademark Office. U.S. law forbids the registration of marks that consist of "immoral or scandalous matter." Trademark Act Section 2(a), 15 U.S.C. §1052(a); TMEP §1203.01.

To be considered “scandalous,” a mark must comprise something that is “shocking to the sense of truth, decency or propriety; disgraceful; offensive; disreputable; … giving offense to the conscience or moral feelings; … [or] calling out for condemnation,” in the context of the marketplace as applied to goods or services described in the application. In re Mavety Media Group Ltd., 33 F.3d 1367, 1371, 31 USPQ2d 1923, 1925 (Fed. Cir. 1994). Scandalousness is determined from the standpoint of “not necessarily a majority, but a substantial composite of the general public, … and in the context of contemporary attitudes.” Id.

One might consider that today, when "bad words" are more prevalent in common parlance, that such standards would be lower- and thus more words no longer qualify as "immoral or scandalous." That is not the case. Basically any bad word, such as "f*ck," "sh!t," and "a$$hole," cannot be registered in the U.S.

That does not stop a lot of people from trying to register such marks. This is one reason for consulting a trademark attorney before filing a trademark application, as they can assist you from essentially donating your filing fees to the USPTO. There's no way you'll be able to argue around this rejection. A quick search of the USPTO records indicate 39 rejected applications comprising the f-word, 60 rejected applications comprising the s-word, and 8 rejected applications with the the a-hole word. The results of these searches are below.

F_ck Trademark Applications
Sh_t Trademark Applications
A_shole Trademark Applications

I have also seen marks such as sh!t being rejected, because the USPTO states that everyone knows that it actually means the word for poop. The only way this will change, and we'll be able to see registered trademarks that comprise "dirty words" will be to change the laws. For now you'll need to use the "TM" symbol, other common law rights, and perhaps state trademark systems to protect your more racy trademarks.

* I myself am no stranger to dirty words, and occasionally use them in my more colloquial speech. I see no need to censor these words on TV or elsewhere. However, to ensure this site is not blocked by filters at work and school, I am using the abbreviations of these words.