30
Nov/11

Dot Anything as Dot Descriptive – Registrability of TLD Suffixes


John Welch discusses a TTAB decision in which the Board rejects five applications for .MUSIC on descriptiveness grounds (the applications covered various IT services including domain name registration.

Applicant pointed out various prior regs for “.” and “dot” formative marks.  The Board noted that that was then, and this is now.  Now there is an awareness in the ether of various proposed top level domains (and the record included press for a .MUSIC proposal that apparently is unrelated to this applicant).

This holding, if affirmed, would put the kibosh on pretty much dot anything.  My suspicion is that a lot of would-be TLD operators are filing in that form to protect their intended trading name, but perhaps to cause some mischief with those who are awarded that particular TLD over them (question: if this applicant had received a registration for .MUSIC covering domain name registration, what rights would it be able to assert against a third-party that was awarded a .MUSIC TLD.

I could see ICANN wanting to prohibit a registry operator from claiming rights in a TLD suffix if it felt that such a claim hindered ICANN’s ability to award the registry to another operator.