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.bank trademark canceled after “mistake”

Kevin Murphy, January 20, 2012, 21:40:40 (UTC), 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.

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Comments (4)

  1. Andrew says:

    Good. I wish the USPTO would spot these things more often.
    VeriSign opposed Asif’s .secure trademark previously.

  2. Acro says:

    The USPTO was asleep at the wheel again. Check out this one

  3. Tom G says:

    I think its safe to say that the ‘dotvegas’, ‘dotfamily’ and other ‘dot’ trademarks would be deemed synonymous to a top level domain and will also be cancelled.
    I think we are still going to see more top level domain trademark applications with bundled services and broader definitions.

  4. Incidentally, the .bank registration was on the Supplemental Register, which in the US means that it is a legal admission by the registrant that its mark is weak and does not have the superior advantages that come with a mark on the Principal Register.

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