Athens Plans .Athens Top Level Domain Name
by Andrew Allemann — September 28, 2010 Policy & Law 12 Comments
Municipality wants .athens, but may run into challenges with trademark application.
Add Athens to the list of municipalities that want to register their own top level domain names.
I haven't seen anything on the web about the city's plans, but it filed two trademark applications with the U.S. Patent and Trademark Office for ".Athens" and "dot .athens" back in February. I hadn't seen these yet because the original applications didn't list domain names as part of the goods and services for the marks.
When originally filed, the trademarks alluded generally to "telecommunications", "education", and "scientific and technological services".
The trademark examiners suggested changes to the classes and the marks were amended last week.
In a letter to the trademark office, an attorney for Athens wrote:
Please note that these two trademarks are very important for the Municipality of Athens, Greece as they will be used for a new Internet Registry in the future. We both understand that it is natural the Municipality of Athens to have rights in the name of Athens, but I have to protect the new Registry from bad faith behaviors. The trademarks have been fully accepted in a National and E.U. Community Level and I didn't have problems with WIPO. I understand that your Trademark Law is different and we have to send you more details.
I was surprised the initial action from the USPTO didn't address that top level domain names can't be trademarked in the U.S., but perhaps that's because the original goods and services classes didn't say that the marks would be used as a TLD.
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12 Comments Tags: athens, new tlds, trademarks
Acro says
Andrew – How do you assess intended TLD's can't be registered as marks?
This is a clear case of mark registration application: symbol (dot) keyword, for a class related to telecommunications.
The real question is, would .athens be approved as a TLD given the fact that there are numerous "Athens" marks already that would all be valid contestants for the TLD?
I guess I'd better target the city of Athens, GA for my Athens.us 😀
@ Acro – you can't register a top level domain name as a trademark in the U.S. (lots of decisions based on that, you can do a search on DNW and find some of them.) You can do it in other places, and it appears Athens has done that.
Good question on Athens the city vs. other uses of "athens"
If you mean that anything that starts with a dot cannot be registered as a mark at the USPTO because in the electronic sense a dot would render the word (or phrase) into a TLD, I'd like to see where this is mentioned.
I understand that the application of the ".athens" mark to be registered is intentional (to secure the TLD) but since there is no TLD already, how would it be denied at the USPTO?
@ Acro
No, you can register something that starts with a .dot but not for goods/services as a top level domain
It's also good to see that the two tm applications (for .athens and "Dot . Athens") waive the exclusive use of "Athens". In other words, the application is indeed related to a future application for the .athens TLD and most importantly, "Athens" domains are safe. Now, DotAthens.com might be in trouble 😀
@ Acro – yeah, I saw DotAthens.com. Registered awhile ago, though
If that's the case, the lawyer of the municipality of Athens was silly to link the tm application to any future use related to a TLD application; "telecommunications services" is a perfectly valid class that would, eventually, secure the TLD if no other contestants applied for the same. Not sure what they plan to do with it at a local level, other than monetize domains under that TLD. It'd be interesting to see how the Greek media, already hungry for "scandals" related to unnecessary expenses in the current state of the local economy would report this application and its associated cost.
Einstein says
"If that's the case, the lawyer of the municipality of Athens was silly to link the tm application to any future use related to a TLD application;"
Acro, it says so on the USPTO page, you cannot trademark a .tld. Even if they sneaked it in on a different class, and someone really wanted then they could take the time and expense of litigating it. But why would anyone but Athens, Greece want .athens? It's not without expenses. .Lavegas or .nyc might be worth the effort, but not Athens, IMO.
Athens made two mistakes:
–They need to hire a US lawyer, debt crisis or not
–NO fakelaki with the application. (half kidding)
@ Acro – The letter the lawyer wrote to the USPTO that said it was for top level domains was a mistake. Not sure if they can slip this one through.
@ Einstein – I believe Acro is saying there are other things name Athens than just the city. Technically, you or I can't go after .lasvegas w/o Las Vegas' approval. Athens has nothing to worry about with someone trying to get .athens to use at the city; they just have to think about a company that uses the same name.
Einstein – The money spent on legal fees or to become a gTLD registry is peanuts compared to the millions of euro at the disposal of the Athens municipality; however, this won't land well with the various syndicates controlled by the communist party (that influences workers and the middle class). On top of that, there are local elections to be held in November – by that, I mean elections that will affect the municipality itself, its mayor etc. So expect a variety of reactions. On the subject of the tm application, indeed, they screwed up disclosing the exact intended use and it should have been generic enough to avoid any future tm clash. I guess the municipality officials are paranoid enough that someone else might apply for .athens as well. As Andrew said, there are plenty of "Athens" trademarks so the municipality would have to be specific as to the use. It's a catch 22 if you asked me.
M. Menius says
This issue of geo tld's is going to be complicated, very complicated. Not only are there city municipalities that think they are entitled, but you have big money business interests who are going to make their case. How will ICANN determine who is most "deserving" if there are multiple applicants.
Those people that are trying to establish trademark rights on a non-existent tld are wasting their efforts.
John Berryhill says
The point of a trade or service mark is that you use the mark on YOUR goods or services to distinguish them from others.
The point of a TLD registry is allowing others to use the TLD in connection with THEIR goods or services.
That is the crux of the decision in Image Online Design v. Core:
http://www.icann.org/en/tlds/correspondence/iod-v-core-22jun00.htm
Names like Yahoo.COM, Google.COM, do not use ".com" as an indicator that Verisign is the source or origin of goods or services provided in connection with those websites. A TLD registry is understood to be the manager of allocations of that TLD, but the TLD string itself is used by the registrants in that TLD for whatever it is they are doing.
Arguably, the TLD string in a chartered TLD, wherein the registrants have to meet some sort of qualification or membership criteria, might function as what is known as a certification mark or a collective mark, in the manner that members of the National Association of Realtors are entitled to use the "REALTOR" mark in the provision of their services. But that is a different kettle of fish.