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In Support of "Closed Generics"

  • To: <comments-closed-generic-05feb13@xxxxxxxxx>
  • Subject: In Support of "Closed Generics"
  • From: "Mary" <Mary@xxxxxxxxxxxxxx>
  • Date: Wed, 6 Mar 2013 09:54:33 -0800

I am writing to respond to those several people who have commented that 
generic terms cannot be trademarked.  Their words are correct, but their 
meaning is not. 

It is a true statement to say that a generic term cannot be trademarked if 
the generic term is used in a non-fanciful way, or used in a way that is 
not arbitrary.  For example, the word "Apple" could not be trademarked for 
an Apple grower, but it could be - and is - trademarked for a computer 

Generic Top Level Domains should be eligible for trademark production 
because they are generic terms used in an unfamiliar - or fanciful - way.  
In the same way, the term "Apple" has been successfully trademarked by 
Apple Computer, Inc. because the term Apple is a common word used in an 
unfamiliar, arbitrary way and is therefore eligible for trademark 
protection.  (See USPTO Registration Number 2808567).  The word "book" as a 
Top Level Domain is a fanciful, arbitrary use of the generic term book.  In 
no way does the word "book" describe a Top Level Domain registry.  
Therefore, the term "book" as a Top Level domain is not a generic term. 

For more information, see Wikipedia's entry on this subject.  

Top Level Domains, today, are not eligible for trademark protection on the 
basis that, according to the USPTO, the Top Level Domain does not qualify 
as a source-identifying mark.  However, this is an error, because by 
definition, a Top Level Domain identifies the source of Registry services 
provided.  In fact, most of the brand applications that were filed in the 
2012 application round indicate that one of the reasons that they applied 
for a Top Level Domain was to provide a trusted, authentic source for 
company information - so that people would know that when they visit a 
.brand TLD that the source of the website is the corresponding brand. 

ICANN would save itself a lot of trouble if, instead of trying to invent 
legal protections for its applicants, it merely embraced the body of law 
that already exists for the claiming of words for business purposes:  
Trademark law.   

As I have said before, such a circumstance would in no way limit ICANN's 
power to approve new registry operators.  For example, the Federal 
Communications Commission (FCC) grants approval for telecommunications 
providers to operate on specific frequencies, however, the USPTO grants 
Trademarks for those operators. In the same way, ICANN should retain 
authority to approve new Top Level Domain operators; however, the USPTO 
must retain authority to administer Trademark law. 

We urge ICANN to encourage the USPTO to begin providing Trademark 
protection for Top Level Domains. 


Mary Iqbal
Get New TLDs Inc.

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