Domain trademarks can be complicated.
A lengthy, investigative article at OnlineDomain yesterday, unveils a lot of activity by a company seeking to register marks matching certain premium geo-domains.
Intellectual property attorney, John Berryhill, does not mince his words regarding the intentions of these trademark applications, that involve domains the applicant does not own.
According to information provided by the article, domains such as Rome.com, Tokyo.com, Jakarta.com, Seoul.com and others have been applied for as trademarks, at the US Patent and Trademark Office.
What is interesting, other than the fact these domains don’t seem to be in the possession of the filing party, is that they all have a foreign trademark application involved.
The four marks we mentioned, and perhaps several more, are applied for at the USPTO using the “44(e)” basis, indicating that a foreign trademark application has been filed.
There is an associated disclaimer in every case:
“At this time, the applicant intends to rely on §44(e) as a basis for registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.”
In other words, the filing is a pre-emptive method to establish claims to the marks, all while the foreign application is pending.
Foreign trademarks are often used as in the flagship opportunity in merchant marine.
For example, while Panama has the most ships under its flag, the biggest merchant marine fleet in terms of tonnage is Greek. Rest assured that most of the Panamanian-flag ships are actually under Greek ownership.
So which foreign country has been chosen in every trademark application in this case?
One might think that a European mark would suffice, but in this case, Pakistan is the country of choice.
But why Pakistan?
We visited the official Pakistani trademark office, and there is no search feature to be found. The only link to conduct a search brings up a Word .DOC file, that needs to be filled out and submitted to the office.
In other words, every related search, to even check the status of a mark, has to be done via submitting a hard copy of a manually filled out form!
The cost per application search is 1000 Pakistani rupees, or roughly $9.55 dollars. Might as well buy them in groups of a dozen searches!
Isn’t that brilliant? 😀
And now for the non-shocking part:
Currently, the trademark applications at the USPTO for Rome.com, Tokyo.com, Jakarta.com, Seoul.com were issued an initial refusal.
“A non-final Office action has been sent (issued) to the applicant. This is a letter from the examining attorney requiring additional information and/or making an initial refusal.”
Issued about a week ago, each application’s refusal states that the marks are “merely descriptive” and that the foreign applications are not from the country of origin of the respective mark.
Time to apply for more trademarks in Italy, Japan, Indonesia and South Korea? 😉
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