The trademark application for the registration of the mark ONHOLD.COM was …put on hold. The applicant operates the domain name OnHold.com, registered since 1997, for telephony services: custom recorded messages and music.
In December 2020 the mark’s application was refused; the USPTO cited the following issues that must be resolved:
- Section 2(d) Refusal – Likelihood of Confusion
- Section 2(e)(1) Descriptiveness Refusal
- Specimen Refusal
- Additional Information About Specimen is Required
- Additional Information About Services is Required
The likelihood of confusion issue is related to an existing mark, HoldCom, that offers services also related to voice messages and digital announcements.
The specimen refusal is related to providing proof of use of the mark in commerce; it’s presented as a sheet of paper with the domain name and the contact information:
Registration is refused because the specimen appears to consist of a mockup of a depiction of the mark on what is described as a flyer and does not show the applied-for mark as actually used in commerce.
Unfortunately, the OnHold.com operators did not submit a response to these issues within six months and the application is now marked as “abandoned.”
Not all is lost: a petition can be filed within 2 months seeking the mark application’s reinstatement. Until then, the registration of the ONHOLD.COM mark is “on hold.”
Why was ONHOLD.COM applied for as a trademark at the USPTO?
It’s an ongoing trend among owners of generic domain names, following the decision by SCOTUS on the Booking.com trademark application.
Since then, dozens of generic domain names have been applied to be registered as trademarks, inclusive of the TLD. We keep track of these applications, and so far none has been decided upon.
As of January 5th, 2021, BOOKING.COM is a registered trademark with the USPTO.
Will these applications become the new norm? Watch this video from NamesCon Online 2020.
