There are those who would not consider "flipping burgers" an intellectual pursuit. Nevertheless, the McDonald's trademark is one of the most valuable trademarks in the world. American Manufactures such as Rubbermaid do not sell directly to consumers, but instead choose to make their products available to consumers through distributors such as Wal-Mart. There are many ways to structure a supply chain. An organizations distribution strategy does not invalidate its owners constitutional rights. The fact that there are those who would game the system is no excuse for throwing out the rulebook. Trademark registration does not give its owner the right to open a Registry. Only ICANN can approve Registries. For example, the United States Patent and Trademark Office has granted various trademarks for telecommunications services to AT&T;. However, the Federal Communications Commission (FCC) retains the authority to allocate the right to operate on specific frequencies within certain geographic areas. In the same way, we assert that the United States Patent and Trademark Office must retain authority to administer trademark law for Top Level Domains, while ICANN should retain the authority to manage the Internet naming system and to approve operating agreements for new/existing Registry Services providers.

I would say the difference between the Rubbermaid/McDonalds comparison is that they do indeed OWN their business. Rubbermaid invented and owns patents for sealing containers. They rightfully own the product and trademarks and can freely dictate the chain of supply and distribution model. Registries are not owned. They operate under a revocable contract with ICANN. It is that contract that defines their distribution and supply chain. gTLD Registries are contractually required to offer equal access to ANY qualified registrar and their resellers that meet the 'reasonable requirements' to maintain the TLD. They cannot discriminate. How can a trademark be enforced when the owner is contractually required to provide equal access to all qualified registrars and resellers? How is a registrar, or reseller supposed to be able to compete when they are unable to freely use .bank,or dotBANK? A TLD trademark has potential to interfere with competition and could result in a monopoly situation, potentially causing harm to end users who otherwise might benefit from competition for their business. Why should just one applicant who intends to apply for a string deserve protection? Should not all potential applicants receive the same consideration in the evaluation process? I'm not an attorney and would love to see a qualified person participate here.

Thomas, there is not much to add to your several observations. You are correct that this notion of gTLD's as marks undermines ICANN's ability to enforce the registry contract. You are also correct that when the point of a registry is to allow others to use the "mark" without restrictions, then the necessary condition of the mark as a quality indicator of the goods or services within the control of the licensor is absent. How "qualified" one needs to be here is up for grabs, with statements like "An organizations distribution strategy does not invalidate its owners constitutional rights." There is no "constitutional right" to trade or service mark registration. In the first place, trademark rights in the US do not arise under the Constitution. The Lanham Act codified a registration system for federal registration and protection of underlying common law rights. US trademark law is within the permissible scope of the powers of Congress under the Commerce Clause to regulate commerce among the states, which is thoroughly distinct from the patent and copyright clause. There is no "Constitutional right" involved. The "AT&T;" analogy is likewise severely flawed. The FCC does not dictate any regulations with respect to the use of AT&T;'s mark for its services. The FCC dictates how AT&T;must conduct certain technical operations, but is not granting any license, permission or anything else in relation to the mark "AT&T;" itself. That situation has zip, zilch, zero, nada to do with the relation between ICANN and a registry in which the subject matter of the regulation is itself the grant of the ability to use the TLD string and under what conditions. How a long distance company brands itself has nothing to do with anything under FCC regulation. In other words, the FCC is not saying, "Here are the conditions under which you can use 'AT&T;'", but ICANN is certainly saying "Here are the conditions under which you can operate .foo as a TLD". Those two situations have nothing in common as they relate to the ability to use "AT&T;" and ".foo" respectively. There are die-hards out there who persist in the belief that filing pieces of paper with the USPTO is going to give them some sort of leg-up in the TLD application process. If this article is reflective of the understanding of basic trademark principles among that community of die-hards, then I wouldn't lose any sleep over the odds of their success in making that case.

The United States Patent and Trademark Office was founded by an act of Congress under powers granted in Article I, Section 8 of the United States Constitution. This fact can be verified on the United States Patent and Trademark Office’s website on the bottom half of this page. http://www.uspto.gov/about/bios/cohn_bio.jsp All acts of Congress are required to have a Constitutional basis. The ICANN Registry agreement is, indeed, a 10-year contract. ICANN does have the right to revoke the operating agreement for breach of contract, however, ICANN should not have the right to take a Registry from one operator and give it to another. The FCC can revoke AT&T;'s right to operate on certain frequencies. However, the FCC cannot take the AT&T;brand and give it to someone else. In the same way, ICANN should have the right to revoke a Registry's operating agreement. ICANN should not have the authority to take a company's business and give it to another Registry. It's about checks and balances. The USPTO must function as a “check” by protecting the private property rights of trademark registrants. The commenter states that the FCC analogy is flawed and then proceeds to make the point that "The FCC does not dictate any regulations with respect to the use of AT&T;'s mark for its services. The FCC dictates how AT&T;must conduct certain technical operations" That is my point exactly. ICANN should approve contracts and maintain and enforce technical requirements. ICANN should not have the power to reassign brands from one company to another. The .COM top level domain is clearly a brand with a very strong brand preference. Over 70% of domains today were purchased within the .COM namespace. Mr. Barryhill states that "the necessary condition of the mark as a quality indicator of the goods or services within the control of the licensor is absent". Such is not the case. Different Top Level Domains offer very different services. For example, the .XXX Top Level Domain provides regular security scans for all of its domain customers. The .PRO Top Level Domain verifies the professions of many of its domain holders. The .ORG TLD was the first to deploy DNSSEC. Each TLD offers different price points. Each may have slightly different take down methodologies. Some, like .MUSEUM and .AERO have requirements that webmasters operate within a specific industry, etc. These are just a few examples that show each Top Level Domain is different, and provides different services to its customers. A recent article on CircleID called for the seizure of the .COM Top Level Domain and argued that .COM should be given to Google, merely because, in the author's opinion, .COM's prices were too high. It has been well demonstrated that private property rights increase prosperity for all by spurring investment. Do we really want to hamper the growth of the Internet by doing away with private property rights? (http://www.circleid.com/posts/google_free_public_dns_load_tops_verisign_raising_dot_com_contract_question/) The suggestion that trademark rights would create a monopoly and prevent competition is not correct. Trademark rights promote investment and encourage competition.

Yes, the Constitution authorizes Congress to fund a navy too. My question was where you are finding a Constitutional right to trademark registration. I mentioned that authority for the Lanham Act does not arise under the patent and copyright clause, but that still managed to sail right past you, as explained in the thread below. "In the same way, ICANN should have the right to revoke a Registry's operating agreement. ICANN should not have the authority to take a company's business and give it to another Registry." When the business itself consists of handing out ".tld" names, then one has to make up one's mind which one of those sentences should be true. ICANN did exactly that with .org, and when .org was re-assigned, there was no ensuing trademark objection by Verisign to that happening. But when the Bell System was broken up by the Justice Department, AT&T;'s "business" was indeed substantially re-structured and re-assigned to the regional Bell operating companies without affecting their right to use the AT&T;mark. Again, the regulation of technical operations by AT&T;by the FCC does not relate to whether and how that company may use "AT&T;". However, the regulation of technical operations of a TLD by ICANN inherently does involve the use and potential re-assignment of the TLD string itself. The "quality control" requisite to maintaining a trademark in a licensing situation is over the goods and services offered under the mark. This is not a matter of services provided to registrants, but relates to the control of the quality of goods and services offered under the "mark". The bottom line is encapsulated in your use of the term "private property" with respect to TLD's. Delegation of a TLD string by ICANN is stewardship of a public trust, and not a grant of a private dukedom. What a TLD "is" is principally defined by RFC 1591 which states: "Concerns about 'rights' and 'ownership' of domains are inappropriate. It is appropriate to be concerned about 'responsibilities' and 'service' to the community." Whatever rights arise from a TLD delegation are not property rights. The rights incident to a TLD delegation are whatever rights are established under the contract between ICANN and the TLD operator. The decision on which TLDs to put into the root, and who is going to have the responsibility of operating them is ICANN's. Nobody is stopping you from building whatever business you'd like around whatever brand you'd like. But so long as your ability to operate as a registry is contingent upon your compliance with your duties to ICANN and the internet community who has entrusted you with stewardship of a TLD, then this approach to that stewardship responsibility by claiming "it's mine" like Scrooge McDuck is an early indication that those who are taking that approach may not be the best candidates to bear the responsibility of a TLD delegation on behalf of the internet community.

Regarding the Image Online Design, Inc. v. Core Association case (http://www.internetlibrary.com/cases/lib_case97.cfm), the reason that Trademark rights were denied in this instance had to do with the string itself. Trademark law has an exception across all industries which, in essence, stipulates that a word cannot be trademarked if the word is merely descriptive of the service being provided. Generally speaking, if the trademarked string answers "what are you" instead of "who are you" then the string is not eligible for Trademark protection. To quote the article above, the court found that “When used in conjunction with a web site, ".web" as a gTLD answers the question "What are you" - a web site related to the operation of the World Wide Web -- and not "Where do you come from." In the same way, the term ‘.TLD’ would not be a trademarkable string for the Registry Services industry, although it would be trademarkable in every other industry. Therefore, no, I do not think that the case you have referenced was a blanket rejection of Trademark protection for the Registry Services industry. To answer your second question, there is a specific USPTO policy which I disagree with. That policy is as follows: " 1215.02(d) Marks Comprised Solely of TLDs for Domain Name Registry Services If a mark is composed solely of a TLD for “domain name registry services” (e.g., the services of registering .com domain names), registration must be refused under Trademark Act §§1, 2, 3, and 45, 15 U.S.C. §§1051, 1052, 1053, and 1127, on the ground that the TLD would not be perceived as a mark…" The United States Patent and Trademark Office was founded by an act of Congress under powers granted in Article I, Section 8 of the United States Constitution. Article 1, Section 8 States that "The Congress shall have Power....to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." The United States Patent and Trademark Office's policy above effectively denies constitutional intellectual property protections across the board for one particular industry on the grounds that – when this policy was enacted at least – most people did not know what a Top Level Domain was. That policy is at least 10 years old, and since then, Top Level Domains have been repeatedly advertised in the Super Bowl and in other prime time television ads. Most notably, the .CO Top Level Domain was recently advertised in the Super Bowl as a specific product available for purchase at the GoDaddy.com website. Additionally, .NET domain names are advertised as “A place for big ideas” via banner advertising on websites including LinkedIn and BizJournals.com. It is no longer accurate to say that most people do not understand that a .COM or .NET purchase is different from a .CO purchase. Furthermore, a technical understanding of the function and technical aspects of a Top Level Domain should not be necessary for trademark protection. For example, Accumulators, Inc. sells Accumulators. According to the Accumulators, Inc. website, which is located at http://www.accumulators.com/technical-information.html, “There are many applications and uses for accumulators. We often say it is the most widely used, unknown product in the world.” Even though the product is not understood by the general public, the term “ACCUMIGHT” was registered in 1996 under registration number 1972929 by Accumulators, Inc., and is currently being used in commerce for the sale of AccuMight® Diaphragm Accumulators, which are designed primarily for pulsation dampening and fluid storage in the off-road and mobile markets. The main point in this instance is that while the general public may not be aware of the accumulator market, those customers who wish to purchase an accumulator do understand what the product is and they are aware of the different brand choices that are available to them. In the same way, webmasters and domainers are aware that the purchase of a .NET or .COM domain name is a fundamentally different purchase from an .XXX domain name. Furthermore, when new Top Level Domains like ‘.unicef’ start coming onto the market, it will be very difficult, indeed, to prove that customers will not perceive .unicef as a source-identifying mark. Indeed, the entire purpose of large companies applying for branded Top Level Domains is to emphasize that all domains within their branded TLDs are operated by the brand indicated to the right of the dot.

Mary, as I mentioned above, the Constitutional authority for the Lanham Act does not come from the patent and copyright clause. The section of the constitution empowering Congress to provide exclusive rights for limited times to authors and inventors relates solely to copyrights and to patents. As it might occur to you there is no "limited time" for trademark protection, which is fundamentally a common law right existing as long as a mark is used (and registrations can be extended indefinitely, unlike patents or copyrights). Part of the reason for its passage was to codify common law principles which federal courts had been applying prior to Erie v. Tompkins. There is no polite way to simply state that you do not understand the legal basis for federal trademark protection in the United States. The Lanham Act is based in the authority of Congress to regulate interstate commerce, which is why an allegation of interstate commerce is required in a trademark registration application. This is explained in the first paragraph of the Wikipedia entry on US trademark law, noting the reason why the first federal trademark law was indeed struck down as improperly based in the patent and copyright clause (http://en.wikipedia.org/wiki/United_States_trademark_law). Absolutely, ".co" names are advertised as being able for purchase, the same way that "dog food" is advertised for purchase by my local supermarket. That doesn't make ".co" a trade or service mark any more than "dog food". Again, you are missing the point of the purpose for which TLD strings are advertised for use by others. They are advertised to prospective registrants so that those registrants can use the string for whatever purpose they'd like. This is fundamentally different from the way that trademarks work. When I buy a BMW-branded automobile, I am not purchasing a license to use "BMW" as part of my business name, identitity, or whatever. I'm just buying the car. But when I buy a gTLD domain name, that's exactly what I'm getting - the unrestricted ability to use the gTLD string however I would like to use it. Your last paragraph, involving a TLD based on a pre-existing brand, is a different kettle of fish. As I noted above, there are different considerations when a chartered TLD is based on a pre-existing brand. Absolutely, if BMW obtains .bmw, and that TLD is reserved exclusively to the use of authorized registrants, such as dealers etc., then the brand owner IS exercising quality control over the goods and services offered by the registrants of the domain name, as well as the right to control who uses it. But, again, relative to gTLD's, that is mixing apples and oranges.