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A domain name can obtain a federal registration as a trademark or a service mark if the domain name functions as a mark.
If the domain name is only used in a way the domain name would be perceived as a way for a customer to contact the applicant, then the domain name would be refused for registration. This would occur if the domain name is near other contact information (such as on a business card), such as near the physical address and telephone number of the applicant. Or another example is as an internet address to contact the applicant or shop for goods. TMEP 1215.02(a)
Refusal will also occur if only used as a domain to access a website and not as a mark. TMEP 1215.02(a)
A domain name would be considered a mark if it identifies the source of the goods or services. A domain name will usually be associated with a service. An example of a use of a domain name as a source identifier would be on the main part of a website (on the actual webpage, and not on the address bar of a web browser) close to a description of the services. (Examples of acceptable specimens of webpages for services in general found at TMEP 1301.04(i)). The domain name can also be used as a source identifier on billboards, flyers, or other uses, where the use is in a way as a mark and not just contact information.
If the mark has a common ending (generic top-level domain (gTLD)) such as .com then the main identifying portion of the mark will be the second level domain, which is the part in between the www. and the .com.
In an application, a specimen with the full website address, can usually be used with only the second level domain in the drawing and not the full website address. If the drawing has the full website address, then the specimen needs to have the full website address. TMEP 1215.02(c)
“[I]f the mark depicted in the specimen includes a gTLD that serves a source-indicating function, the drawing of record must include such source-indicating gTLD.” As described, in a relevant passage by the Trademark Office related to changing the mark, “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.” TMEP 1215.08(a)
A gTLD of .tax has been considered in the past as not indicating a source of the service. SN: 88572650 Office Action Issue Date Nov. 12, 2019
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