.MUSIC likely to be perceived as music-related TLD

United States of America
In In re theDot Communications Network LLC (Serial Nos 77/622,942, 77/622,944, 77/622,945, 77/622,947 and 77/622,948, November 22 2011), the Trademark Trial and Appeal Board (TTAB) has upheld the decision of the trademark examining attorney of the US Patent and Trademark Office (USPTO) to refuse registration on the Principal Register of the mark .MUSIC for domain registration services, various computer-related services and music-related goods.

The trademark examining attorney refused registration of .MUSIC on the grounds that it was merely descriptive of the applied-for goods and services under Section 2(e)(1) of the Trademark Act (15 USC § 1051 et al). 

The TTAB first addressed the applicant’s contention that the USPTO has a practice of allowing the registration of top-level domains (TLDs), such as '.travel'. The TTAB stated that the determination of whether a mark is merely descriptive must be based on the evidence of record at the time registration is sought. The evidence and arguments with regard to .MUSIC involved the question of current consumer perception of domain names and internet addresses, which have changed and evolved since the cited marks were registered. As a result of the upcoming ICANN generic TLD expansion, there are now numerous groups seeking TLD names, including another group seeking to register '.music' for use by musicians and the music industry. The TTAB concluded that the present-day public is likely to perceive .MUSIC as a TLD in the field of music. The TTAB stated that unrelated third-party '.____' and 'dot ____' registrations had very limited probative value, especially if those registrations were not supported by evidence of actual use, and reinforced its policy that third-party registrations are not conclusive on the question of descriptiveness. 

The TTAB then affirmed the trademark examining attorney’s finding that .MUSIC was merely descriptive of the applied-for goods and services. To determine whether .MUSIC was merely descriptive, the question was “whether someone who knows what the products listed in the description of the mark are will understand the mark to convey information about them”. In this case, having determined that .MUSIC engenders the commercial impression of a TLD in the field of music, the TTAB stated that its analysis must be whether someone who knows the goods or services listed in the applications will understand the mark to directly convey information about them. The TTAB found .MUSIC to be descriptive of “registration of domain names for identification of users on a global computer network”, because consumers would anticipate that .MUSIC identifies the registration of domain names for a music-related TLD. 

The TTAB rejected the applicant’s argument that .MUSIC was arbitrary with respect to some of its identified services, noting that registration will be denied if a mark is merely descriptive of any of the services for which registration is sought. The TTAB went on to find .MUSIC descriptive of internet hosting services, music publishing and entertainment services, online directory services and downloadable music content (the additional applied-for services).
Ron N Dreben and Dana M Nicoletti, Morgan Lewis & Bockius LLP, Washington DC

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