TMEP 1215.08(c): Adding or Deleting “.” in Marks for Domain Name Registry Operator or Registrar Services

This is the October 2015 Edition of the TMEP

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1215.08(c)    Adding or Deleting “.” in Marks for Domain Name Registry Operator or Registrar Services

When used in connection with domain name registry operator or registrar services, wording immediately preceded by a dot (“.”) will likely be viewed by consumers as a gTLD. On the other hand, the same wording, used in connection with the same services, but shown without the “.” would not give the impression of a gTLD and could be viewed as an indicator of source, such that the commercial impression created by the marks materially differs. Thus, the “.” in this context does not constitute the type of “extraneous, nondistinctive punctuation” discussed in TMEP §807.12(a)(i).

Accordingly, an applicant may not amend an application to add a “.” before wording in a mark for which the identification of services encompasses domain name registry operator or registrar services. Nor may an applicant amend a drawing to delete a “.” from the beginning of wording in a mark in these instances.

Example: Amending an applied-for mark from TMARKIE to.TMARKIE would materially change the commercial impression of the mark from that of a source-indicating mark to that of a gTLD.