TMEP 1215.02(d)(iv): Legitimate Service for the Benefit of Others

October 2017 Edition of the TMEP

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1215.02(d)(iv)    Legitimate Service for the Benefit of Others

To be considered a service within the parameters of the Trademark Act, an activity must, inter alia, be primarily for the benefit of someone other than the applicant. See In re Reichhold Chems., Inc., 167 USPQ 376, 377 (TTAB 1970); TMEP §1301.01(a)(ii). Therefore, the examining attorney must issue an information request pursuant to Trademark Rule 2.61(b), 37 C.F.R. 2.61(b), to ascertain the following information to determine if the domain-name registry operator and registrar services will be primarily for the benefit of others:

  • Does the applicant intend to use the applied-for mark as a gTLD?
  • Does the applicant intend to operate a registry for the applied-for mark as a new gTLD and sign a Registry Agreement with ICANN for such gTLD?
  • To what entities and industries will the applicant’s domain-name registry operator and registrar services be targeted?
  • Does the applicant intend to register domain names for others using the gTLD identified by the applied-for mark and will there be any restrictions on to whom it will be available?

While operating a gTLD registry that is only available for the applicant’s employees or for the applicant’s marketing initiatives alone generally would not qualify as a service, registration for use by the applicant’s affiliated distributors typically would.

If the applicant fails to indicate for the record that the applicant’s domain-name registry operator and registrar services are, or will be, primarily for the benefit of others, the examining attorney must refuse registration pursuant to §§1, 2, 3, and 45 of the Trademark Act, 15 U.S.C. §§1051-1053, 1127. See TMEP §1301.01(a)(ii).