TLDs and the USPTO (Case Brief: In re energy.me)

TLDs and the USPTO (Case Brief: In re energy.me)

The number of top-level domains (TLDs) had been limited to 22 generic TLDs (gTLDs), e.g. “.com” “.net” and “.org”, and over 200 country code TLDs (ccTLDs), such as “.uk” “.cn” and “.de”.  In late 2013, ICAAN began rolling out batches of new gTLD extensions – offering more personalized (“.guru” “.lawyer”), subject matter specific (“.bike” “.art”) and city level (“.nyc” “.berlin”) options.  As of October 2014, ICAAN had delegated over 400 new gTLDs with an additional 1,300 new gTLDs potentially available in the future (including branded TLDs like “.Nike” and “.McDonalds”).  Here’s a full list of all active TLDs.

Domain names raise many interesting and unique trademark issues.  And like all marks, they are registrable on the Principal Register at the U.S. Patent & Trademark Office (USPTO) if they function as source identifiers.  See Trademark Manual of Examining Procedure (TMEP) Section 1209.03(m).  As new gTLDs are launched, domain name registrants are also seeking federal trademark protection for their domain name marks.  Trademarks incorporating these new TLD suffixes raise novel issues in evaluating the distinctiveness, meaning and registrability of marks.

The general rule is that the TLD portion of a domain name indicates an Internet address and adds no source-identifying significance to a trademark. TMEP Section 1209.03(m).  This is particularly important when the domain name is generic or merely descriptive wording.  The USPTO has rejected applications for MATTRESS.COM, HOTELS.COM, LAWYERS.COM, PATENTS.COM, BLINDSANDDRAPERY.COM, among others, on the ground that adding a TLD to an otherwise unregistrable mark will typically not render it registrable.

However … and this is a huge “However” from the U.S. Court of Appeals for the Federal Circuit:

“… there is no bright-line, per se rule that the addition of a non-source-identifying gTLD to an otherwise descriptive mark will never under any circumstances operate to create a registrable mark. The Federal Circuit has cautioned that in rare, exceptional circumstances, a term that is not distinctive by itself may acquire some additional meaning from the addition of a gTLD such as “.com” or “.net.” In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005)”

TMEP Section 1215.04 citing In re Oppendahl & Larson LLP, 71 USPQ2d 1370, 1373 (Fed. Cir. 2004).

New gTLDs will likely make the “rare, exceptional circumstances” less “rare” and “exceptional”.

Here are a few new gTLDs marks that have been approved by the USPTO (all on the Principal Register with no disclaimer):

BLINDS.GURU for “distributorship and retail store services in the field of window coverings”

STUDENTLOAN.GURU for “advertising, marketing and promotion services in the field of Student Loan Repayment Assistance”

REPUBLIC.BIKE for “bicycles; on-line retail store services featuring bicycles”

TMEP Section 1209.03(m) offers the following examination guidelines:

“… when examining domain-name marks, it is important to evaluate the commercial impression of the mark as a whole to determine whether the gTLD may be capable of source-indicating significance, and whether the composite mark conveys any distinctive source-identifying impression apart from its individual components. The examining attorney must introduce evidence as to the significance of the individual components, including the gTLD, but must also consider the significance of the composite to determine whether the addition of a gTLD has resulted in a mark that conveys a source-identifying impression.”

Brand owners have successfully incorporated ccTLDs to create “additional meaning” where the TLD has a meaning beyond being merely a domain name extension.  Here’s a representative sample of registered trademarks containing Libya’s “.ly”, India’s “.in” and Italy’s “.it” TLD strings:

FRIEND.LY for “On-line social networking services”

DRIVESAFE.LY for “software for converting text messages to audio, software for converting SMS messages to audio, software for converting email messages to audio in real time, software for automated responses to an incoming message”

LIVELOCAL.LY for “Advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications channels”

READ.IT for “teaching in the field of reading for dyslexic individuals and other struggling readers”

COLLECT.IT for “Computer application software for mobile phones, portable media devices, and handheld, portable, or desktop computers, namely, software for cataloging and sharing personal collections of items; and downloadable mobile applications for cataloging personal collections of items”

LISTEN.IN for “Entertainment services, namely, providing non-downloadable playback of music via global communications networks”

EXCLUSIVELY.IN for “On-line retail store services featuring fashion clothing, apparel, jewelry, home decor, art and general consumer merchandise

CHIME.IN for “downloadable software and computer application software”

All of the above domain name marks are registered on the Principal Register because the interplay between the TLDs and the wording in front of the “dot” creates an additional meaning and inherently distinctive mark.  Like most new gTLDs, some ccTLDs are also common English words or abbreviations (or in the case of “.ly” – a word element)(there’s also “.tv” from Tuvalu and, perhaps of interest to the trademark-minded, Turkmenistan offers a “.tm”).  The USPTO does, and will, approve domain name marks that combine TLDs with wording (even non-distinctive terms) that results in a composite mark with a meaning separate and apart from that of a domain name.

The Trademark Trial and Appeal Board (TTAB) of the USPTO recently applied these legal principles in the context of a “.me” ccTLD.

Case Brief: In re energy.me, LLC

In a rare decision involving a mark comprised of a ccTLD, the TTAB refused registration of the marks ENERGY.ME and the verbal equivalent ENERGYDOTME, finding them merely descriptive of “energy management” and “retail electricity provider” services under Section 2(e)(1).  In re energy.me, LLC, Serial Nos. 85650024 and 85650045 (TTAB September 29, 2014) [not precedential].  The decision details the applicable law in analyzing registrability of trademarks incorporating TLDs with English word meanings and portends issues faced by the growing number of applicants seeking registration of marks containing new gTLDs.

In refusing the marks, the Examining Attorney argued that they merely describe the field or type of services offered by the Applicant because they combine the descriptive word “energy” with a non-source identifying TLD “.me” (or “DOTME”).  The Applicant countered by arguing that “.me” (and DOTME) would be perceived by consumers as the common English word “me” (in the case of energy.me) or as a distinctive letter-string (in ENERGYDOTME), rather than a TLD, and as a result the overall commercial impression of the marks are that of a “witty play on words or double entendre” on the dual meaning of “me” in the marks.

The TTAB began its analysis by focusing on the meaning of the term “energy,” finding that it describes the genus of Applicant’s services, namely, the provision of electricity services, since Applicant’s services are encompassed within the broader term “energy.”

The Board then turned to the meaning of the “.me” extension.  It noted that “.me” is a ccTLD for Montenegro and that it “has been popularized as the domain name to use for a site that profiles oneself or one’s company.”  A well-known example is the About.me mark, service and website (which is a registered trademark that the USPTO has deemed inherently distinctive).  The Board determined that given the popularity of the .me ccTLD “Applicant’s prospective consumers are likely to be familiar with the term ‘.me’ as an internet extension for domain names.”

Next, the TTAB evaluated whether Applicant’s ENERGY.ME mark created a double entendre or play on words.  It recognized that consumers are likely to perceive “.me” as a common English word in addition to perceiving “.me” as the TLD extension in Applicant’s mark.  However, the Board refused to draw a bright line between TLDs that have an independent meaning in the English language and those that do not.  Here’s the crucial passage from the opinion:

For a mark that includes a domain name extension such as “.me” to be considered inherently distinctive, there must exist a grammatical connection or natural continuity between the words, such that the “.me” extension is plausibly modified or acted on by the preceding word, in this case, “energy,” thereby contributing to the meaning of the domain name as a whole.”

Applicant argued that its marks created a double entendre by combining a noun (energy) with the word “me” and transforming the noun into a verb to create the equivalent of the phrase “Energy Me” … which consumers would interpret as “give me energy” or “give me some energy.”  In support of its position, the Applicant submitted the following website printouts showing third party use of a descriptive noun (“burger” “beer” “pizza” “ cake” “burrito”) combined with the word “me”:

Screen shot 2014-10-22 at 6.39.26 PM

Screen shot 2014-10-22 at 6.40.44 PM

Screen shot 2014-10-22 at 6.40.54 PM

The Examining Attorney distinguished Applicant’s mark from these third party uses by pointing out that none of the marks shown above include a “dot.” The Board agreed with the Examining Attorney.  It explained that the presence of a “dot” in front of the word “me” in Applicant’s mark results in a different overall commercial impression and signals to consumers that the phrase is a domain name.  The Board found the necessary “grammatical connection or natural continuity” lacking in the instant marks and held that the primary significance of “.me” is as a TLD and not the English word “me.”

In line with examination guidelines, the TTAB did note that the Federal Circuit has acknowledged the possibility of creating a registrable domain name mark comprised of a descriptive term and a TLD:

“… although TLDs will most often not add any significant source-identifying function to a mark, a bright-line rule might foreclose registration to a mark with a TLD component that can demonstrate distinctiveness.” citing In re Oppendahl & Larson LLP, 71 USPQ2d 1370, 1373 (Fed. Cir. 2004).

The Board addressed the existence of numerous active third party USPTO registrations for marks containing a “.me” extension by conceding that the mere presence of a “dot” in a mark does not always transform it into a domain name.  Nevertheless, based on the facts of the instant case, the TTAB concluded that Applicant’s combination of the words “energy” and “me” do not create an enhanced overall meaning and the Examining Attorney clearly showed that “.me” in ENERGY.ME will be perceived by consumers as a domain name.  The Board also found the substitution of the word “dot” for the period in ENERGYDOTME did not alter public perception of the mark and the relevant public were likely to view ENERGYDOTME as the spelled-out version of ENERGY.ME.  Both refusals were affirmed.

My Comments:  This was a close decision.  I think the Applicant could have bolstered its double entendre/play on words argument if it actually used or marketed its ENERGY.ME mark to mean “give me energy” or “give me some energy.”  A cursory review of the <energy.me> website doesn’t demonstrate that the Applicant markets this interpretation to consumers.  The real world uses relied on by Applicant were all references to nouns for foods — “burger” “beer” “pizza” “ cake” “burrito” — whereas Applicant is in the energy industry.  While it is plausible that consumers would perceive the phrase “BURGER ME” to mean “give me a burger” — it seems much less likely that consumers would apply this same interpretation to the energy industry.  How often do people ask for “energy” or to be given electricity?

Similarly, most third party registrations of “.me” marks comprise a coupling with a verb to form an action statement (love.me, guard.me, join.me), creating the interplay or natural grammatical continuity that the TTAB was looking for and found lacking here.

With the advent of new gTLDs, the USPTO will receive more applications for marks that incorporate TLD extensions in creative and unique ways.  This decision provides some guidance on how the USPTO will examine marks in the expanding new gTLD field.  But as is typical of trademark legal analysis generally, these are fact intensive inquiries highly dependent on the circumstances of each particular case.

Paradoxically, in the domain name world the more generic or descriptive the domain name the greater its monetary value.  Insure.com, Internet.com and Hotels.com are all among the highest priced domain names in published sales.  For the reasons detailed above, domain name registrants seeking exclusivity and broad trademark protection in a given market need to be mindful of how the USPTO is likely to treat its domain name mark.  New gTLDs are comprised primarily of common English words and the interplay between the second-level domain and new gTLD extension will define the scope of trademark rights, if any, for the domain name mark.

Finally, according to my research, this is only the third ex-parte TTAB decision involving a ccTLD.  No TTAB decisions have issued (to date) on domain name marks comprising new gTLDs (the .MUSIC decision concerned applications for a mark consisting of only the TLD portion and has limited applicability beyond domain name registration or registry services).  The two other ccTLD decisions involved the same applicant and companion applications for the marks SECURITY.TV and EMAIL.TV, wherein the same panel of TTAB judges issued 2-1 decisions with Judge Seeherman dissenting in both decisions.  Judge Seeherman’s well reasoned dissenting opinion in SECURITY.TV and dissent in part in EMAIL.TV anticipates many of the issues presented in the energy.me case and may ultimately become the majority view in the context of new gTLDs and certain TLDs.

© Roberto Ledesma

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