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By Tamlin H. Bason
The term “.music” is merely descriptive of a broad range of internet services relating to music, and thus the term is not eligible to be registered as a trademark, the Trademark Trial and Appeal Board ruled Nov. 22 (In re theDot Communications Network LLC, T.T.A.B., No. 77622942, 11/22/11).
The board also noted that there has been considerable support for a .music generic top-level domain in connection with the roll out of new TLDs by the Internet Corporation for Assigned Named and Numbers. Thus, a consumer would likely believe that a company with a .music mark would be performing domain name registry functions. Because the applicant in fact planned on performing these functions, the board said that the term was descriptive and not registrable.
TheDot Communications Network LLC filed five intent-to-use applications for mark “.music.” A registration was sought in connection with the following services that theDot planned to offer:
• Online social networking services and domain name registration services under Class 45 (application No. 77622942);
• The creation of a virtual online community where users could upload content, showcase their skills, and interact with each other under Class 42 (application No. 77622944);
• Recording, production and post-production services and other multimedia services under Class 41 (application No. 77622945);
• Online retail services for purchasers and vendors of digital music under Class 35 (application No. 77622947); and
• A platform where users could download MP3 files and participate in online discussions under Class 9 (application No. 77622948).
The trademark examining attorney refused to register the mark after determining that it was merely descriptive of the proposed services, and thus not registrable under 15 U.S.C. §1052(e)(1).
According to the examining attorney, music is a component of theDot's goods and services, and thus the proposed mark merely describes some of the services being offered. The examining attorney also concluded that the period at the beginning of the mark did nothing to alter the impression of the mark.
TheDot appealed. It argued that the proposed mark “is completely arbitrary in relation to most of the services cited in this application … and has no inherent relation whatsoever to domain registration or social networking services.” TheDot also argued that the fact that some of its services may encompass music does not, in and of itself, make the mark merely descriptive as applied to the wide-range of services that it will offer under the mark.
In regards to the period at the beginning of the proposed mark, theDot said, “Both the ‘dot' and the word ‘music' have several apposite meanings, and combine to form a unitary mark that does not ‘merely describe' any of Applicant's services.”
TheDot also pointed out that the Patent and Trademark Office has allowed other companies to register TLDs as marks, and urged the board to again do so here.
The determination of whether a proposed mark is descriptive must be judged from the evidence that existed when the mark was sought, the board said, looking at In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001), and In re Thomas Nelson Inc., 97 USPQ2d 1712 (TTAB 2011) (22 PTD, 2/2/11). Thus, Administrative Trademark Judge Marc A. Bergsman said that it was necessary to consider the proposed mark against the backdrop of the evolving top-level domain ecosystem.
Although some TLDs have been registered as marks—noteably “.coop,” “.org,” and “.BIZ”—those registrations took place prior to ICANN's announcement in 2011 that it would greatly expand the existing number of TLDs. That decision, which was finalized June 20, could greatly expand the internet's namespace as it will allow applicants to apply to be a register either of a community based gTLD, or of a standard gTLD (120 PTD, 6/22/11).
The board noted that there are some groups that are not affiliated with theDot have already begun generating support for a .music TLD. The groups have collected over 2 million supporters for a community-based .music extension.
The board said that because of these efforts for a .music TLD, the perception of the .music mark would be that it “conveys the commercial impression of a top-level domain name similar to .com, .net., and not merely the word ‘Music' featuring nondistinctive punctuation.”
“Moreover,” the board said “consumers would understand it to be a top-level domain in the field of music.” The registration of the other TLDs took place before this contemplated expansion, and therefore there was not a strong chance that consumers would believe that those marks were connected with domain registration services, the board said.
TheDot argued that even if some consumers would believe that it was a TLD offering domain registrations, it was seeking the mark in connection with a broad range of services of which domain registration was only a minor part. The board was unconvinced.
Looking to In re Quick-Print Copy Shop Inc., 616 F.2d 523, 205 USPQ 505 (CCPA 109), the board said, “Even though the services listed in the application encompass more than domain registration … , registration will be denied if a mark is merely descriptive of any of the services for which registration is sought.”
The board then looked at each application individually and determined that in every instance the .music mark was descriptive either of the online services, or of the music related services that theDot planned to offer under the mark. As a result, the board upheld the examining attorney's refusal to register the mark.
Administrative Trademark Judges Charles M. Grendel and Terry E. Holtzman joined the decision.
TheDot was represented by Mark Rodenbaugh of Rodenbaugh Law, San Francisco.
Opinion at http://pub.bna.com/ptcj/77622942.pdf
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