TMEP 1215.08(a): Adding or Deleting TLDs in Domain Name Marks

This is the October 2015 Edition of the TMEP

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1215.08(a)    Adding or Deleting TLDs in Domain Name Marks

Generally, an applicant may add or delete a non-source-identifying gTLD to/from the drawing of a domain name mark (e.g., COOPER amended to COOPER.COM, or COOPER.COM amended to COOPER) without materially altering the mark. Although a mark that includes a gTLD generally will be perceived by the public as a domain name, while a mark without a gTLD will not, if the gTLD merely indicates the type of entity using the domain name, the essence of the mark is created by the second-level domain name, not the gTLD. Thus, the commercial impression created by the second-level domain name usually remains the same whether the non-source-identifying gTLD is present or not. If the gTLD does function as a source indicator, its deletion from the domain name mark may constitute a material alteration of the mark.

Example: Amending a mark from PETER to PETER.COM would not materially change the mark because the essence of both marks is still PETER, a person’s name.

Example: Amending a mark from ABC.PETER to ABC would materially change the mark because the essence of the original mark is created by both the second-level domain and the gTLD.

Similarly, substituting one non-source-identifying gTLD for another in a domain name mark, or adding or deleting a “dot” or “http://www.” or “www.” to a domain name mark is generally permitted.

Example: Amending a mark from ABC.ORG to ABC.COM would not materially change the mark because the essence of both marks is still ABC.

Example: Amending a mark from ABC.COM to ABC.PETER would materially change the mark because the essence of the original mark was ABC and the proposed mark now includes a source-identifying gTLD.