Trademark Matching TLD Not Subject to Failure to Function Rule, Descriptive Anyway

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By Joseph Wright

July 1 — A “failure to function” rule that may prevent the trademark registration of top-level domains by registry operators and registrar services did not apply to a website operator whose service matched the naming convention of TLDs, the U.S. Patent & Trademark Office's Trademark Trial and Appeal Board held June 30.

Administrative Trademark Judge Frances S. Wolfson said that although the DOTBLOG designation might appear to be a TLD if considered separately from the identification of services, the applicant's recitation of services made clear that it was not establishing a domain for blogs nor registering domain names. The failure to function rule prevents registries and registrars, in most cases, from registering a TLD name as a trademark.

Nevertheless, the panel said, the expected delegation of a the .blog TLD by the Internet Corporation for Assigned Names and Numbers in the near future contributed to a finding that the DOTBLOG mark was merely descriptive of the service of finding and summarizing relevant blog posts, including those in the .blog TLD once it launches.

DOTBLOG Mark Sought for Blog Summaries

Applicant Driven Innovations Inc. (DII) sought to register the DOTBLOG mark for purposes of “providing specific information as requested by customers via the Internet.” Specifically, the service creates reports summarizing relevant blog posts to user-provided search terms.

The examining attorney refused the registration under Trademark Act § 2(e)(1), 15 U.S.C. § 1052(e)(1), on the grounds that it merely described DII's services. It also refused registration under the separate grounds that the term fails to function as a service mark distinguishing DII's services from others' under 15 U.S.C. § 1051-1053, 1127. DII requested reconsideration and ultimately appealed the decision.

The panel disagreed with the examiner's assessment that consumers would see the DOTBLOG mark as a generic TLD and that providing online services encompassing the .blog TLD meant the term failed to function as a service mark. While the failure to function rule may be applied to domain name registries and registrars, the panel said, DII does not offer registry or registrar services. Thus the failure to function basis for refusal was inapplicable.

The panel found, though, that the term “blog” merely described DII's information services, while “dot” merely indicated the online nature of the services. Together the term DOTBLOG, then, was merely descriptive of DII's service. DII argued that it does not operate a blog and that the mark was unitary, conveying online services related to blogs. The panel found, however, that the mark in its entirety did not present new meaning beyond the descriptive and would immediately be understood by consumers as describing a website featuring or related to blogs.

The panel also found that in light of the anticipated release of the .blog TLD, consumers were also likely to perceive DII's mark as related to information gleaned from the .blog domain. In that regard, the mark remained merely descriptive of the services provided, and was not eligible for registration.

The panel consisted of Wolfson, Gerald F. Rogers, Susan M. Richey David E. Bucher and David Mermelstein. Rodenbaugh Law represented DII.

To contact the reporter on this story: Joseph Wright in Washington at

To contact the editor responsible for this story: Thomas O'Toole at

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