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.bank trademark canceled after “mistake”

Kevin Murphy, January 20, 2012, Domain Policy

A US trademark on the term “.bank” granted to a likely .bank top-level domain applicant has been canceled just over a week after it was approved.

The Patent & Trademark Office withdrew trademark 4,085,335 yesterday, stating that it had been issued to Asif LLC in error.

The USPTO noticed that the application was for a gTLD string after receiving a letter of protest on January 6, which it forgot to process before granting the trademark.

In a letter to Asif’s lawyers, the USPTO noted that it has a policy of not approving trademarks for TLDs, adding:

The USPTO has broad authority to correct mistakes…

In view of the letter of protest prior to registration and the clear violation of the USPTO’s established policy that marks such as this do not function as trademarks, this registration is canceled as inadvertently issued

Asif, which recently changed its name to Domain Security Company, intends to apply to ICANN for .bank and .secure, but as I reported last week it faces an uphill battle given rival .bank bids.

It used a Wild West Domains reseller account to demonstrate to the USPTO it was using the .bank mark.

It’s not currently clear who was responsible for the letter of protest.

Tiny start-up secures .bank gTLD trademark

Kevin Murphy, January 12, 2012, Domain Registries

A likely new gTLD applicant has secured a US trademark on the term “.bank”.

Asif LLC, a Wisconsin start-up with an undisclosed number of employees, won approval for the trademark 4,085,335 on Tuesday, for use in “domain name registration services”.

(UPDATE: Asif actually does business now as Domain Security Company LLC, but the trademark application was filed under its former name.)

As Domain Name Wire reported last year, Asif became a Go Daddy reseller in order to provide the US Patent & Trademark Office with proof it was using the brand.

It appears the gambit was successful, and the company now has a card to play in its inevitable battle with other .bank applicants, such as the BITS/American Bankers Association project.

Mary Iqbal, Asif’s CEO, told DomainIncite today that the company also has a trademark pending in Pakistan, where it has existing business connections.

Iqbal says she’s serious about her .bank application. It’s an idea she’s been working on for a few years.

Asif has been talking to security companies about providing the security infrastructure for the gTLD and has already signed up with a registry back-end provider, she said.

All she was prepared to disclose at the moment is that one of these partners has “ground-breaking encryption technology” and that the company has solid plans for its security profile.

The .bank gTLD would of course be limited to manually verified financial institutions, Iqbal confirmed.

Explaining the reseller site used to get the trademark, Iqbal said: “We intend to use that in future to sell .bank domain names but for now we’re selling names in other TLDs.”

Asif also has a pending US trademark on “.secure”, which it also plans to apply for as a gTLD.

Iqbal said that the company plans to offer small and medium sized e-commerce businesses extra security services if they redirect their customers to their .secure domain at the checkout.

While I am unaware of any other public .secure applicants, the .bank gTLD is expected to be contested.

A joint project of the American Bankers Association and BITS, part of the Financial Services Roundtable, has already essentially confirmed that it plans to apply for .bank and possibly two other financial gTLDs, using Verisign as its back-end.

“We don’t know for sure if they’re going to apply for .bank,” Iqbal said, however. “If somebody else does apply, all I can say that we are the legal rights holder for .bank.”

Holding a trademark on a term gives companies the right to file a Legal Rights Objection against new gTLD applicants.

However, as much as I love an entrepreneur, I estimate the chances of Asif getting its .bank application approved at roughly zero, trademark or not.

There are about half a dozen different reasons Asif would probably not pass the Legal Rights Objection test, which would leave it in a contention set with other .bank applicants.

The final mechanism offered by ICANN to resolve contested gTLDs is an auction, and nobody goes into an auction against the American Bankers Association expecting to win.

ICANN also encourages applicants in contention sets to talk it out amongst themselves before resorting to auction. If Asif is lucky, a rival .bank applicant will pay it to go away before the string goes to auction.

If it’s very lucky, somebody will acquire the trademark before the company – which Iqbal said is already funded but would welcome additional investment – splashes out $185,000 on its application fee.

The Asif .bank application also stands a substantial chance of being objected to by governments.

ICANN’s Governmental Advisory Committee, and in particular the influential US representative, has very strong views on gTLDs purporting to represent regulated industries.

If the GAC is faced with a choice between a .bank backed by the ABA and BITS with a Verisign back-end, and one backed by a tiny Wisconsin start-up, I believe there’s a pretty good chance the Wisconsin start-up is going to find itself on the receiving end of a GAC Advice objection.

Just a hunch.