Re: protecting a domain name

On 3/23/99, Patrick Begos <begos[_at_]ibm.net> wrote:
>
> On Tue, Mar 23, 1999, Kerry L. Konrad <k_konrad[_at_]stblaw.com> wrote:
> >
> > Regarding TM registration of a second-level domain name, isn't there
> > some question whether the PTO will accept the use as qualifying? I
> > know that there were some problems with it at one time, if the name
> > wasn't the same as the non-Internet trade name or if all you were
> > trying to register was the same name plus ".com." The contention
> > was that the domain name was an address for communications, not an
> > identifier of the source of goods or services. Maybe others have had
> > more recent, favorable experiences.
>
> I think the answer is certainly "yes." There are many SLD names that I
> can't imagine being accepted for registration. "Attorney," "Business,"
> "Internet," etc.

It depends what the goods are. Someone who uses a "attorney.com" web site to sell legal services might not succeed in obtaining a US registration, due to generic or descriptive qualities of the domain name. Yet the same domain name used to sell, say, used cards, might well be capable of being registered.

> Perhaps other countries (I keep hearing about Tunisia) are more
> willing to register these kind of generic words.

Yes, that is correct.

> As far as NSI is concerned, it doesn't matter what country has
> registered the SLD.

That's true too, though NSI has changed its policy five times in four years, something like that.

> BTW, under NSI's current policy, a registration of "attorney.com"
> won't fly. The registration can't include the TLD.

That is a very important point. Lots of domain name owners have obtained trademark registrations that include the TLD for the precise reason of satisfying NSI's policy as it was previously, and now under NSI's latest revision such registrations are considered worthless by NSI.

Carl Oppedahl
<carl[_at_]oppedahl.com> Received on Wed Mar 24 1999 - 13:14:50 GMT