TMEP 1215.02(d)(iii): Registry Agreement/ICANN Contract

October 2017 Edition of the TMEP

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1215.02(d)(iii)    Registry Agreement/ICANN Contract

If the applicant has not entered into a Registry Agreement with ICANN designating the applicant as the Registry Operator for the gTLD identified by the mark, consumers may be deceived by use of a particular gTLD as a mark. Consumers generally would believe that the applicant’s domain-name registry operator and registrar services feature the gTLD in the proposed mark, and would consider that material in the purchase of these services. Therefore, to avoid a deceptiveness refusal under §2(a) of the Trademark Act, 15 U.S.C. §1052(a); TMEP §§1203, 1203.02–1203.02(g), the applicant must: (1) submit evidence that it has entered into a currently valid Registry Agreement with ICANN, designating the applicant as the Registry Operator for the gTLD identified by the mark prior to registration and (2) indicate in the identification of services that the domain-name registry operator and registrar services feature the gTLD shown in the mark.

If the application does not include a verified statement indicating that the applicant has an active or currently pending application for a Registry Agreement with ICANN designating the applicant as the Registry Operator for the gTLD identified by the mark, the examining attorney must issue an Office action with an information request under Trademark Rule 2.61(b), 37 C.F.R. 2.61(b), that requires the applicant to submit a verified statement indicating: (1) whether the applicant has in place, or has applied for, such a Registry Agreement with ICANN and (2) if the applicant has so applied, the current status of such application. The examining attorney must include an advisory indicating that if the applicant does not have a currently active, or currently pending application for a, Registry Agreement with ICANN designating the applicant as the Registry Operator for the gTLD identified by the mark, a deceptiveness refusal will be issued pursuant to §2(a). A currently pending application with ICANN avoids an immediate deceptiveness refusal, but as discussed below, the USPTO will not approve the trademark application for publication without proof of the award of the Registry Agreement.

If the applicant fails to respond to the information requirement, the examining attorney must maintain and continue the information requirement and issue a deceptiveness refusal under §2(a). If, in response to the information requirement, the applicant indicates that: (1) the applicant has not applied for a Registry Agreement with ICANN designating the applicant as the Registry Operator for the gTLD identified by the mark; (2) the applicant has applied for a Registry Agreement with ICANN designating the applicant as the Registry Operator for the gTLD identified by the mark, but that the application has not been approved and is no longer pending with ICANN; or (3) the applicant’s previous Registry Agreement with ICANN is no longer valid, the examining attorney must issue a deceptiveness refusal under §2(a).

If the applicant indicates that it has a currently pending application before ICANN for a Registry Agreement for the gTLD identified by the mark and the applicant has otherwise demonstrated that the mark consisting of the gTLD in the application before the USPTO could function as a mark, the examining attorney may suspend the application until the resolution of the applicant’s pending application with ICANN. See TMEP §716.02(i).