need trademark protection for a generic domain name? help...

Need Trademark Protection for aGeneric Domain Name?

Help May be Just a Phone Call Away

Ann K. Linnehan*

TABLE OF CONTENTS

I. INTRODUCTION ..................................... 503II. TRADEMARK PROTECTION IN GENERAL ................... 506

A. The Lanham Trademark Act ........................ 506B. The Trademark Spectrum .......................... 508

III. VANITY PHONE NUMBERS ............................. 511A. The History of Protecting Telephone Numbers as Marks ... 511B. Genericness and Telephone Numbers ................. 513

1. The View of the Second Circuit Court of Appeals ...... 5132. The View of the Third Circuit Court of Appeals ....... 5143. Registrability and the Federal Circuit ............... 516

IV. DOMAIN NAMES .................................... 519A. How Domain Names Work ......................... 521B. Domain Names as Trademarks ...................... 522C. Registration Not Permitted for Generic Domain Names ... 523D. The TTAB Weighs In .............................. 524E. Not the Final Word ............................... 526

V. PROTECTION IS WARRANTED .......................... 528A. Domain Name Marks are Phrases ................... 528B. Source Indicative ................................ 530C. Monopolistic Concerns ............................ 532

VI. CONCLUSION ...................................... 533

I. INTRODUCTION

With over twenty-seven million domain name registrations, it appears thatthe New Economy of the 1990s is here to stay.' At the center of the shift away

* Ms. Ann Linnehan is a Trademark Attorney for the United States Patent andTrademark Office. The views expressed herein are not those of the United States Patent andTrademark Office or any other federal government agency.

1. Domain names are one of the best available indicators of the spread of the use ofthe Internet and e-commerce. Zooknic Internet Intelligence, History of gTLD Domain NameGrowth, http://www.zooknic.com/Domains/counts.html (last visited Feb. 14, 2003).

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from manufacturing to high-tech industries are the Internet and e-commerce. 2

Despite the recent slowdown in the economy, the legal environment continuesto play "catch-up" with the changes wrought by the digital age. The growth ofe-commerce challenges trademark law to keep pace, specifically with regardto domain names.

In order to compete in this New Economy, businesses must distinguishthemselves with catchy and memorable domain names.3 Since the Internet'sinception, many businesses have discovered that domain names containingterms that precisely define the nature of their services or products are mostlikely to leave a lasting impression on consumers. Business owners look fornames incorporating the generic term for their goods and services because awebsite's commercial success depends largely on its ability to attract visitors.4

Another facet of this success is how easily a consumer can find the web siteusing a simple search of the Internet.5 After all, it is hard to imagine a betterdomain name for a boat manufacturer than "boats.com." Similarly, a travelagent would likely attract new customers with the name "travel.com" or"travelagency.com."

The demand for generic domain names and the investment made bycompanies in such names has spawned concern as to whether the basicstructures of trademark jurisprudence are capable of protecting these domainnames.' Without such protection, large expenditures to acquire and promotethese valuable assets may all be for naught.7

2. Texas Turns in Mixed Performance in New Economy Survey, SAN ANTONIO Bus.J., June 28, 2002, at 15.

3. See Ronald E. McGaughey & Kevin H. Mason, The Internet as a Marketing Tool,7/6/98 J. MKTG. THEORY & PRAC. Il l (describing how "The Internet may have more potentialas a marketing tool than any of its media predecessors, including the television.").

4. Business.com Goes for $7.5m, ONLINE REPORTER, Dec. 6, 1999, at I (reportingthat generic domains like "business.com, " "furniture.com," and "drugs.com" are prized bynet start-ups seeking to carve out a distinct identity for themselves amidst the .com clutter).

5. McGaughey & Mason, supra note 3, at I11.6. A number of commentators have addressed many of the trademark law issues

involving domain names, including those with generic elements. See, e.g., G. Peter Albert,Jr., Right on the Mark: Defining the Nexus Between Trademarks and Internet Domain Names,15 J. MARSHALL J. COMPUTER & INFO. L. 277, 277 (1997); Jennifer R. Dupre, A Solution tothe Problem? Trademark Infringement and Dilution by Domain Names: Bringing theCyberworld in Line With the "Real" World, 87 TRADEMARK REP. 613,613-14 (1997); MartinB. Schwimmer, Domain Names and Everything Else: Trademark Issues in Cyberspace, 528PLI/PAT 263 (1998); Kenneth Sutherlin Dueker, Note, Trademark Law Lost in Cyberspace:Trademark Protection for Internet Addresses, 9 HARV. J.L. & TECH. 483, 483-84 (1996);Susan Thomas Johnson, Note, Internet Domain Name and Trademark Disputes: ShiftingParadigms in Intellectual Property, 43 ARIz. L. REV. 465, 466 (2001).

7. See Karen Kaplan, Web Address Fetches a Record $7.5 Million, L.A. TIMES, Dec.1, 1999, at CI (explaining how "Internet names ending in '.com' or '.org' can be registered

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TRADEMARK PROTECTION

Domain names can function and be protected as trademarks.8 Thegenericness doctrine in trademark law, however, maintains that a genericterm-i.e., one that names the good or service itself-is precluded fromprotection because of the inherent risk of monopolizing a word vital todescribing or naming the product sold.9 Hence, words like "table" and "chair"are not protected for a manufacturer of these items because its competitorswould be unfairly disadvantaged.

The application of the genericness doctrine to domain names utilizing ageneric term may be precarious. Little case law concerning the registrabilityand consequent protection of generic domain names exists. Further, the UnitedStates Patent and Trademark Office (USPTO) refuses to protect genericdomain names as trademarks.' 0 In the recent case In re Martin Container,Inc., the Trademark Trial and Appeal Board (TTAB or Board) affirmed theUSPTO's position that such marks should not be protected." The Board'sreasoning, however, is incongruous with recognized trademark lawjurisprudence. The courts should look to the judicial treatment of vanitytelephone numbers under trademark law for a proper perspective when makingdeterminations regarding domain names containing generic terms.2 A moreuniform approach to resolving trademark disputes involving the protection andregistrability of domain names with generic terms is warranted.

This Article examines domain names as trademarks. In doing so, itaddresses whether domain names spelling generic terms should be affordedtrademark protection. Part II provides a brief overview of trademark law andexamines its foundations in the Lanham Trademark Act of 1946.'" Part IIIreviews cases involving the use of vanity telephone numbers as trademarks for

for only $70, but catchy names are changing hands with increasing frequency [and at highprices] as companies launch all sorts of electronic commerce ventures.").

8. See Lockheed Martin Corp. v. Network Solutions, Inc., 985 F. Supp. 949, 956,(C.D. Cal. 1997), affd, 194 F.3d 980 (9th Cir. 1999) (stating that domain names can functionas trademarks).

9. 2 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION§ 12:1 (4th ed. 2002) [hereinafter MCCARTHY].

10. UNITED STATES PATENT & TRADEMARK OFFICE, TRADEMARK MANUAL OFEXAMINING PROC., § 1215.05 (3rd ed. 2002), available athttp://www.uspto.gov/web/offices/tac/tmep/ [hereinafter TMEP]. The Trademark Act of 1946gives the USPTO initial jurisdiction in deciding whether a mark is registrable. 15 U.S.C. §1123 (2001).

II. 65 U.S.P.Q. 2d 1058, 1060-62 (U.S. Pat. & Trademark OfficeTrademark Tr. &App. Bd. 2002) [hereinafter TTAB].

12. See Brookfield Communications, Inc. v. West Coast Entm't Corp., 174 F.3d 1036,1044 (9th Cir. 1999) ("Each web page has a corresponding domain address, which is anidentifier somewhat analogous to a telephone number....").

13. 15 U.S.C. §§ 1051-1127 (2000).

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insight concerning domain names. This section also discusses the disparatetreatment currently given vanity telephone numbers by the federal circuits. PartIV discusses domain names and their ability to function as trademarks.Additionally, this section reviews early indications that the road to protectinggeneric domain names may be long. Further, it offers a critique of a recentdecision regarding the registrability of a generic domain name. Lastly, Part Vanalyzes how and why current trademark law principles can provideappropriate protection for owners of domain names incorporating genericelements. These principles can secure the interests of owners of generic domainnames while avoiding an unfair competitive advantage over others.

II. TRADEMARK PROTECTION IN GENERAL

A trademark is "any word, name, symbol, or device or any combinationthereof' used by an entity to identify and distinguish its goods. 4 If the markis used to identify services, it is referred to as a service mark.'5 Policies ofconsumer protection, economic efficiency, and property rights underlietrademark law and serve as justification for their protection. 16

A. The Lanham Trademark Act

The current federal law governing trademarks is the Lanham TrademarkAct of 1946 (Lanham Act).1' This statute provides for the federal registrationof trademarks along with remedies for trademark infringement. 8 Suchregistration confers certain rights and benefits on the owner of a mark and

14. 15 U.S.C. § 1127 (2000). Unlike copyrights and patents, the Constitution does notprovide for federal regulation of trademarks. Congress exercises its power over trademarksunder the Commerce Clause. U.S. CONST. art. I, § 8, cl. 3.

15. See 3 MCCARTHY, supra note 9, § 19:81. Because the legal requirements for bothtrademarks and service marks are essentially the same, they are both referred to generally andherein as trademarks. See 15 U.S.C. § 1053 (2000). The Lanham Act allows for theregistration of four different types of marks-trademarks, service marks, collective marks,and certification marks. 15 U.S.C. §§ 1052-1054 (2000).

16. See I MCCARTHY, supra note 9, § 2:2.17. 15 U.S.C. §§ 1051-1127 (2000). The Act, which was named for its sponsor,

Congressman Fritz Garland Lanham, was first passed in 1946 and became effective on July5, 1947.

18. 15 U.S.C. § 1051 (2000). It should be noted that trademarks that are not federallyregistered may be registered under an individual state's statutes or may qualify for certainprotections under common law. See 3 MCCARTHY, supra note 9, § 22:1. Additionally, theLanham Act provides for the protection of unregistered marks from other marks which arelikely to cause confusion or mistake as to the origin or sponsorship of the goods or servicesinvolved. 15 U.S.C. § 1125 (2000). It is debatable whether such protections extend tounregistered marks that are considered generic or descriptive.

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operates as a protective measure, preventing others from using confusinglysimilar marks. 9

Under the Lanham Act, marks may be federally registered on either thePrincipal or the Supplemental Register.20 The Principal Register is reservedfor inherently distinctive marks and those that have acquired distinctiveness.2In addition to providing an owner with prima facie evidence of the mark'svalidity,22 registration on the Principal Register offers the owner an exclusiveright to use the mark,23 incontestability of the mark's registration after fiveyears use,24 federal jurisdiction over disputes, 5 increased attorney's fees anddamages, 26 and an opportunity to post registration with U.S. Customs in orderto block the importation of infringing goods.27 The Supplemental Register, onthe other hand, is intended for marks that are not eligible for the PrincipalRegister, but are capable of distinguishing one's goods or services. 28 Thisregister serves as a basis for registration in foreign countries and fordiscouraging use of similar marks by others.29

19. See 15 U.S.C. § 1057(b) (2000). Under 15 U.S.C. § 1114:(1) Any person who shall, without the consent of the registrant-

(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registeredmark in connection with the sale, offering for sale, distribution, or advertising of any goodsor services on or in connection with which such use is likely to cause confusion, or to causemistake, or to deceive...shall be liable in a civil action by the registrant....15 U.S.C. § 1114(1) (2000).

20. 15 U.S.C. §§1051, 1091 (2000).21. 15 U.S.C. §§ 1051, 1052(f) (2000). Acquired distinctiveness, also referred to as

secondary meaning, is a concept that recognizes a mark that has come to identify not only thegoods, but the source of the goods. To demonstrate a claim of secondary meaning, one mustshow "that the primary significance of the term in the minds of the consuming public is notthe product but the producer." Ralston Purina Co. v. Thomas J. Lipton, Inc., 341 F. Supp.129, 133 (S.D.N.Y. 1972). Hence, a term which is otherwise deemed descriptive may,through usage by one producer for his goods, "acquire a special significance" or meaning suchthat consumers eventually associate the word with the particular manufacturer of the product.Id.

22. 15 U.S.C. § 1057(b) (2000).23. Id.24. 15 U.S.C. § 1065 (2000).25. 15 U.S.C. § 1071 (a)(l) (2000).26. 15 U.S.C. § 1117 (2000).27. 15 U.S.C. § 1124 (2000).28. 15 U.S.C. § 1091(a) (2000). Generally speaking, marks on the Supplemental

Register are descriptive in nature and lack secondary meaning. Such marks do not receive theadvantages of every section of the Trademark Act. 15 U.S.C. § 1094 (2000).

29. See 15 U.S.C. §§ 1091(a), 1126(c) (2000).

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The central purpose of trademark law is to protect the public and thetrademark owner.3

' By allowing consumers to identify and acquire the goodsthey desire, confusion as to the origin of the goods is avoided. This guaranteesthe consumer that all goods bearing the same mark are the same quality.3I Thetrademark owner's goodwill is protected by prohibiting a mark'smisappropriation onto other products. 32 In other words, the owner'sinvestment in their mark is ensured. 33 Thus, legal protection for trademarksfosters economic efficiency and encourages the manufacture and sale of highquality goods and services.34

B. The Trademark Spectrum

The law does not protect every trademark. To be registrable or protectedby a court, a mark must satisfy certain requirements regarding its ability todistinguish the relevant goods in the marketplace.35 Hence, protection isdependent on the mark's propensity to identify the source of the product orservices on which it is used.36 The more distinctive a mark, the greater thelevel of protection.37 To assist them in determining the protection affordedeach mark, the courts categorize marks along a continuum ranging fromstrongest, or most distinctive, to weakest, or least distinctive.38 Specifically,

30. See I MCCARTHY, supra note 9, § 2:2.31. 1 MCCARTHY, supra note 9, § 3:10 ("[Tlhe quality function of marks does not

mean that marks always signify 'high' quality goods or services-merely that the qualitylevel, whatever it is, will remain consistent and predictable among all goods or servicessupplied under the mark.").

32. Id. at § 2:15.Good will is that which makes tomorrow's business more than an accident. It is thereasonable expectation of future patronage based on past satisfactory dealings....Good will is dependent on identification.... Only second in importance to thebuilding of good will is the establishing of the marks by which it is fixed andvisualized, and their defense and protection from the assaults of the infringer andunfair trader.

Id. at § 2:17 (quoting ROGERS, GOOD WILL, TRADEMARKS AND UNFAIR TRADING 13 (1914)).33. See Qualitex Co. v. Jacobson Prods. Co., Inc., 514 U.S. 159, 163-64(1995) (stating

that the owners will be able to "reap the financial, reputation-related rewards" of their goodsand services).

34. 1 MCCARTHY supra note 9, § 2:3-2:4.35. See generally 15 U.S.C. § 1124 (2000).36. See generally id.37. Id.38. See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976).[A] term that is in one category for a particular product may be in quite a differentone for another, because a term may shift from one category to another in light ofdifferences in usage through time, because a term may have one meaning to one

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these four categories are: (1) arbitrary or fanciful; (2) suggestive; (3)descriptive; and (4) generic. 39 Arbitrary, fanciful, and suggestive marks areprotected without hesitation and are registrable on the Principal Register.n°

Descriptive marks are protected only if evidence of acquired distinctiveness isprovided.4 Generic marks are denied protection because they are sodescriptive that they cannot acquire distinctivess.42 Generic matter is notregistrable on either the Principal or Supplemental Register.43

Arbitrary marks, such as "Camel"" for cigarettes or "Mustang"45 forhotels, are words found in the dictionary, but, when used to identify specificgoods or services, they "bear no relationship to the products or services towhich they are applied."46 Fanciful marks are terms contrived solely tofunction as a trademark.47 Examples include "Kodak" '48 and "Exxon."' 9

Suggestive trademarks require the consumer to exercise imagination, thought,or perception to infer connection between the marks and the goods.50 For

group of users and a different one to others, and because the same term may be putto different uses with respect to a single product.

Id.39. Id.40. Id. at 11.41. Id. at 10.42. Essentially, they are not capable of distinguishing a producer's goods or services.

15 U.S.C. § 1091(c) (2000); see also 15 U.S.C. § 1127 (2000) (defining trademark);Abercrombie & Fitch Co., 537 F.2d at 9 ("This means that even proof of secondary meaning,by virtue of which some 'merely descriptive' marks may be registered, cannot transform ageneric term into a subject for trademark.").

43. See TMEP, supra note 10, § 1209.01 (c).44. See Wal-mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 210 (2000).45. Mustang Motels, Inc. v. Patel, 226 U.S.P.Q. 526 (C.D. Cal. 1985) ("The word

'mustang' as applied to hotels is used only in a 'fictitious, arbitrary and fanciful manner."').46. Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786,791 (5th Cir. 1983).47. Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455, 464 (4th Cir. 1996) ("Fanciful

marks are, in essence, made-up words expressly coined for serving as a trademark."j.48. Eastman Kodak Co. v. Rakow, 739 F. Supp. 116, 117 (W.D.N.Y. 1989) ("The

Kodak trademark is perhaps one of the strongest and most distinctive trademarks in thiscountry, if not in the world .... There is no doubt that the KODAK mark is one of thestrongest and most recognizable marks in the world.").

49. Exxon Corp. v. Xoil Energy Resources, Inc., 552 F. Supp. 1008, 1010 (S.D.N.Y.1981).

50. A.J. Canfield Co. v. Honickman, 808 F.2d 291, 297 (3d Cir. 1986) (citing StixProducts, Inc. v. United Merch. & Mfr., Inc., 295 F. Supp. 479, 488 (S.D.N.Y 1968)).

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example, "Coppertone"' has been held suggestive for suntan oil, as has"Habitat" for home furnishings.52

A mark is descriptive if it describes an ingredient, quality, characteristic,function, or feature of particular goods or services.53 To be deemeddescriptive, a mark must provide reasonably accurate or distinct knowledge ofthe product's characteristics. 54 Examples of descriptive marks are "Tintz ' 55

for hair coloring formula, "Spex"56 for optician services, and "Chap Stick" 57

for skin preparation in a stick.Generic terms are not protectable because they merely identify "the genus

of which the particular product is a species. 5' The generic "name of [a]product answers the question 'What are you?"' '59 For instance, the term"automobile," unlike "Civic" or "Accord," indicates that the product is "a ...4-wheeled automotive vehicle designed for passenger transportation on streetsand roadways and commonly propelled by an internal-combustion engine.... ""

Generic terms are "free for all to use. '61 Hence, no one person is grantedthe exclusive right to the generic name of any item and any possibility of amonopoly is thwarted.62 Ultimately, fair competition demands that all

51. Douglas Lab. Corp. v. Copper Tan, Inc., 210 F.2d 453, 456 (2d Cir. 1954). TheSecond Circuit maintained that the mark "Coppertone" was "more properly a 'come-on,' toallure the trade, than a mundane description of the preparation itself or its indirectconsequences." Id.

52. Habitat Design Holdings Ltd. v. Habitat, Inc., 436 F. Supp. 327, 331 n.5 (S.D.N.Y.1977), affd as modified, 573 F.2d 1290 (2d Cir. 1978) ("The term 'Habitat' connotes 'home'or 'environment' and suggests a variety of goods and services. One could just as easily usethe term for a real estate agency as for a manufacturer or retailer of home furnishings.").

53. See In re Gyulay, 820 F.2d 1216, 1216-17 (Fed. Cir. 1987).54. 2 MCCARTHY, supra note 9, § 11: 9.55. Fleetwood Co. v. Mende, 298 F.2d 797, 798-99 (C.C.P.A. 1962) (finding that the

mark "Tintz" was a phonetic spelling of "tints," which is "weak as an indicator of source ororigin" given that evidence of" II third party registrations involving the word 'tint' as partof the trademark for similar goods" was provided).

56. Spex, Inc. v. Joy of Spex, Inc., 847 F. Supp. 567, 572 (N.D. Ill. 1994) ("The word'spex,' which cannot be found in the dictionary, is a homonym for 'specs,' which does appearin standard American dictionaries .... [W]ith respect to eyeglasses ... it means 'spectacles."').

57. Morton Mfg. Corp. v. Delland Corp., 166 F.2d 191, 193 (C.C.P.A. 1948) (holdingthat the plaintiffs use of "Stick" was merely descriptive of the shape of its product).

58. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992) ("[G]enericmarks-those that 'refer to the genus of which the particular product is a species'... are notregistrable as trademarks.").

59. 2 MCCARTHY, supra note 9, § 12:1.60. WEBSTER'S THIRD NEW INT'L DICTIONARY OF THE ENGLISH LANGUAGE

UNABRIDGED 148 (1971) (listing the definition of "automobile").61. 2 MCCARTHY, supra note 9, § 12:2.62. Id.

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producers of the same product be permitted to use the product's generic namein order to efficiently describe their goods.63

III. VANITY PHONE NUMBERS

Before the advent of the domain name, the vanity telephone number madeits appearance in the American marketplace. 64 Vanity telephone numbers, suchas "I-800-FLOWERS" or "I-800-DENTIST," employ numbers on thetelephone keypad to spell an easily remembered word.65 Due to theireffectiveness as a marketing technique, vanity telephone numbers have beenused increasingly by businesses as a trademark.66 Trademark law recognizesthese numbers as protectable matter.67

The protection of domain names as trademarks is analogous to theprotection afforded vanity telephone numbers. The history and case lawinvolving vanity phone numbers serve as a useful foundation for a review ofthe protection of Internet domain names.

A. The History of Protecting Telephone Numbers as Marks

The Chicago World's Fair-1992 Corp. v. Chicago World's FairCommission68 court was the first to establish trademark rights in a telephone

63. See A.J. Canfield Co. v. Honickman, 808 F2d 291, 304 (3rd Cir. 1986).Underlying the genericness doctrine is the principle that some terms so directlysignify the nature of the product that interests of competition demand that otherproducers be able to use them even if terms have or might become identified witha source and so acquire 'de facto' secondary meaning. ... Courts refuse to protecta generic term because competitors need it more to describe their goods than theclaimed markholder needs it to distinguish its goods from others.

Id.64. AT&T invented the toll-free number in 1967. AT&T Toll-Free Calling Hits the

Big 3-0, PR NEWSWIRE, May 19, 1997 [hereinafter AT&T Toll-Free].65. Holiday Inns, Inc. v. 800 Reservation, Inc., 838 F. Supp. 1247, 1249 (E.D. Tenn.

1993), rev'd 86 F.3d 619 (6th Cir. 1996).66. See AT&T Toll-Free, supra note 64.The creation of computerized databases [in the 1980s] within AT&T' s long-distancenetwork.. enabled businesses to use.. .and promote.. .a single nationwide 800number, instead of different 800 numbers in different states. Almost overnight itbecame smart business [for companies] to include a toll-free number in nationaltelevision or print advertising. The advertising fueled consumer awareness oftoll-free numbers which, over time, grew into an expectation that companieswanting business will provide [a toll-free] number.

Id.67. See discussion infra Part IU.A.68. No. 83-C3424, 1983 U.S. Dist. LEXIS 14573, at *1 (N.D. Ill. Aug. 16, 1983).

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number.69 The court held that the defendant's use of the telephone number"434-1992" was an infringement of the plaintiffs use of "444-1992" and,consequently, enjoined the defendant from using the similar number.7°

Not until the development of vanity telephone numbers, however, werecourts presented with the question of protecting telephone numbers containingword elements. The first court to address trademark protection for vanity phonenumbers, the California Court of Appeals, denied such protection. InCytanovich Reading Center v. Reading Game, the plaintiff was the owner ofa reading improvement center in Palo Alto, California with exclusive rights tothe telephone number "321-7323. She had advertised its correspondingmnemonic form, "321-READ," since 1975.7' The defendant operated areading improvement service with a branch office near the plaintiff s center.74

In 1980, the defendant acquired the telephone number "494-7323," whichcorresponded to the mnemonic "494-READ. 75 The plaintiff filed a claimalleging trademark violation and unfair competition.76 On appeal, the courtaffirmed the lower court because the word "read" was not a mark deserving ofprotection.77 In essence, then, protection was rejected due to the generic natureof the plaintiff's mark.

Soon after Cytanovich Reading Center, courts began to accept and upholdvanity telephone numbers as trademarks-at least those without descriptive orgeneric matter.78 The initial cases concerning these marks involved issues ofinfringement and a comparison between vanity telephone numbers andtraditional word marks.79 In making these comparisons, courts viewed vanityphone numbers as merely another form of word mark, without makingallowances for its atypical character.8"

In American Airlines v. A 1-800-A-M-E-R-I-C-A-N Corp., for example,the court compared the marks of American Airlines, which include

69. Elizabeth A. Horky, Note, 1-800-I-AM-VAIN: Should Telephone Mnemonics BeProtected as Trademarks? 3 J. INTELL. PROP. L. 213, 232 (1995).

70. Id.71. Cytanovich Reading Ctr. v. The Reading Game, 162 Cal. App. 3d 107, 112 (1984).72. Id. at 109.73. Id.74. Id.75. Id.76. Cytanovich Reading Ctr., 162 Cal. App. 3d at 110.77. Id. at 112 ("[W]e conclude that neither the number itself nor suffix method, nor

Cytanovich's use of same, can be deemed to constitute a trademark or service mark.").78. See Horky, supra note 69, at 232 (containing an excellent and more

comprehensive review of the history of vanity phone numbers).79. Id.80. Id.

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"American," to the defendant's use of "I -800-A-M-E-R-I-C-A-N" for a travelagency business that the defendant listed under "airline companies" in theyellow pages.8' American Airlines sought injunctive relief to prohibit thedefendant from advertising in the "airline company" section of the yellowpages, alleging that the defendant misled the public into believing that it hadsome affiliation with American Airlines.82 The court issued the injunction,finding that the defendant's listing itself as an airline company was false,misleading, and a source of public confusion.83

Using a similar analysis in Kelley Blue Book v. Car-Smarts Inc.,84 thecourt found that plaintiffs "Kelley Blue Book" trademark and defendant's"1-900-BLU-BOOK" and "I-800-BLUE-BOOK" marks were "substantiallysimilar in sight, sound, and appearance."85 This caused consumer confusionbecause both parties offered pricing information for new and usedautomobiles.86 The court issued a permanent injunction against defendant'suse of the term "blue book."87

B. Genericness and Telephone Numbers

Later cases addressed the unique nature of vanity telephone numbers andquestioned the level of protection that these marks deserved. Thus, the issue ofwhether a vanity telephone number should be protected as a mark came to theforefront. Numerous legal approaches concerning the protection of vanitynumbers-particularly those incorporating generic material-have surfaced.There is growing support for protecting numbers that incorporate genericmatter.

1.The View of the Second Circuit Court of Appeals

The Second Circuit first directly addressed the issue of genericness in thecontext of vanity telephone numbers in 1989.88 In Dial-a-Mattress FranchiseCorp. v. Page, the court affirmed a preliminary injunction prohibiting thedefendant from advertising a confusingly similar telephone number.89 Thus,

81. 622 F. Supp. 673, 675-76 (N.D. Ill. 1985).82. Id.83. Id. at 686.84. 802 F. Supp. 278 (C.D. Cal. 1992).85. Id. at 283.86. Id.87. Id. at 294.88. Dial-a-Mattress Franchise Corp. v. Page, 880 F.2d 675, 676 (2d Cir. 1989).89. Id. at 678.

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the court upheld the protection of a telephone mnemonic containing a genericterm.90

The plaintiff, a New York mattress dealer, had long been using the localphone number "628-8737," which corresponded to the letters "M-A-T-T-R-E-S" on the telephone dial. 9' The plaintiff advertised its services extensively withthe slogan: "'DIAL-A-MATTRESS and drop the last "S" for savings."' 92

Although aware of the plaintiff's use of the mnemonic number, the defendant,owner of an easy bed and mattress business, obtained the 1-800 version of thenumber and promoted it as "I-800-MATTRESS. 93 The plaintiff sued for aninjunction.94 The defendant argued that judicial protection of a telephonenumber spelling a generic term is unwarranted. 95 The Second Circuit foundthat general principles concerning generic terms could not serve as the solefoundation for a decision. 96

The court maintained that the plaintiff was not seeking protection againstthe defendant's use of the generic term "mattress."97 Rather, the court assertedthat the plaintiff was seeking "protection against a competitor's use of aconfusingly similar telephone number and a confusingly similar means ofidentifying that number." 98 In granting the injunction, the court reasoned thatthe principles limiting protection for generic terms did not justify acompetitor's attempts to confuse the public with a similar telephone numberor similar corresponding letters on the telephone dial.99

2. The View of the Third Circuit Court of Appeals

In Dranoff-Perlstein Assocs. v. Sklar,'0° however, the Third Circuitrefused to follow the lead of the Second Circuit. Instead, it adopted the view

90. Id.91. Id. at 676.92. Id.93. Dial-A-Mattress Franchise Corp., 880 F.2d at 677.94. Id.95. Id.96. Id. at 678.97. Id.98. Dial-A-Mattress Franchise Corp., 880 F.2d at 678.99. Id. The Second Circuit's decision has been followed by other federal and state

courts. See, e.g., Murrin v. Midco Communications, Inc., 726 F Supp. 1195, 1201 (D. Minn.1989) (enjoining defendant's use of "I-800-L-A-W-Y-E-R-S" in order to protect theplaintiff's use of the mark "L-A-W-Y-E-R-S" in the same geographic area); Express MortgageBrokers, Inc. v. Simpson Mortgage, Inc., No. 94-71056, 1994 WL 465842, at *6 (E.D. Mich.May 06, 1994) (granting an injunction against the use of "369-CASH" in the same area as themark "1-800-760-CASH").

100. 967 F.2d 852 (3rd Cir. 1992).

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that telephone numbers are subject to the same principles as traditional marksand, consequently, cannot be protected if generic."'

At issue in Dranoff-Perlstein were marks used by two Delaware lawfirms. 10 2 Beginning in 1984, Dranoff-Perlstein used and extensively advertisedthe telephone mnemonic "INJURY- 1." 03 Six years later, Sklar acquired thetelephone number corresponding to "INJURY-9." 0 4 Like the plaintiff, Sklaralso widely advertised its number in the mnemonic form. '05 In considering theplaintiff' s infringement claims, the court espoused the view that generic termsso directly signify the product that, in the interests of competition, otherproducers must also be able to use them.10 6 The court saw no reason toexclude telephone mnemonics from the application of this principle.0 7 Thecourt reasoned that granting protection to generic telephone mnemonics wouldcreate a situation in which the first firm in a given market obtaining such atelephone number would gain unfair advantage "merely by winning the race tothe telephone company.' 0 8

The appellate court concluded that the "INJURY" element of the plaintiff'smark was generic for personal injury legal services because "INJURY" was"so commonly descriptive of the name of the service."'0 9 However, the casewas remanded to determine if the mark "INJURY-I" as a whole was entitledto protection in this instance."l 0 Thus, the issue of confusion turned on thesuffixes "1" and "9.""'1

Following Dranoff-Perlstein, the USPTO instituted new examinationprocedures, adopting the Dranoff-Perlstein reasoning. 12 Under theseguidelines, a mark comprised of a "merely descriptive" or generic term "with

101. Id. at 857.102. Id. at 853-54.103. Id.104. Id. at 854.105. Dranoff-Perlstein Assocs., 967 F.2d at 854.106. Id. at 857 (quoting A.J. Canfield Co., 808 F.2d at 304).107. Id.108. Id.109. Id. at 860. Other courts have followed the reasoning of the Third Circuit. See, e.g.,

800 Spirits, Inc. v. Liquor by Wire, Inc., 14 . Supp. 2d 675, 679 (D. N.J. 1998); IconSolutions, Inc. v. Ikon Office Solutions, Inc., No. 97-4178, 1998 WL 314672, at *4 (E.D. Pa.June 15, 1998).

110. Dranoff-Perlstein Assocs., 967 F.2d at 861.111. Id. at 861-62 (quoting 2 MCCARTHY, supra note 9, § 23:15). "If a common portion

of the two conflicting marks is a public domain generic word, the emphasis of the enquiryshould be upon the confusing similarity of the nongeneric portion, with the ultimate issuedetermined by the confusing similarity of the total impression of both marks." Id.

112. UNITED STATES PATENT & TRADEMARK OFFICE, TRADEMARK MANUAL OFEXAMINING PROC., § 1209.01(b)(12) (2d. ed., rev. April 1, 1997).

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numerals in the form of an alphanumeric telephone number" would be deniedregistration."13 In addition, these guidelines declared "The fact that adesignation is in the form of a telephone number is insufficient, by itself, torender it distinctive."'

14

Both Dial-A-Mattress and Dranoff-Perlstein involved general principlesof trademark law in the context of infringement and unregistered marks." 5

The actual registrability of a mark with a generic element in a telephonemnemonic was an issue of first impression for the U.S. Court of Appeals forthe Federal Circuit in 2001.116

3. Registrability and the Federal Circuit

In 1996, Dial-A-Mattress Operating Corporation filed a federal trademarkapplication for the mark "1-888-M-A-T-R-E-S-S" for "telephoneshop-at-home retail services in the field of mattresses."".7 The USPTO refusedto register the mark because the mark was deemed generic or merelydescriptive of the services without acquired distinctiveness." 8 The TTABupheld the finding of the USPTO's examining attorney." 19

As to genericness, the TTAB employed the Dranoff-Perlstein rationale. Indoing so, the Board rejected registration of a telephone number containing ageneric mnemonic term because such registration would prohibit competitorsfrom using generic terms and create unfair competitive advantages. 2 ' TheBoard applied a two-part inquiry established by H. Marvin Ginn Corp. v.International Ass'n of Fire Chiefs, Inc.'21 In determining whether a mark isgeneric, two factors are considered: (1) the genus of goods or services at issue,and (2) whether the term sought to be registered is "understood by the relevantpublic primarily to refer to that genus of goods or services. "22

113. Id.114. Id.115. See Dial-A -Mattress Franchise Corp., 880 F. 2d at 676; Dranoff-Perlstein Assocs.,

967 F.2d at 854.116. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341 (Fed. Cir. 2001).117. Id. at 1343.118. Id. at 1344.119. In re Dial-A-Mattress Operating Corp., No. 75/131,355, 1999 WL 1186220, at *9

(Trademark Tr. & App. Bd. Nov. 2, 1999), rev'd, 240 F.3d 1341 (3rd Cir. 2001).120. Id. at *2.12 1. ld. at *2-3.

122. H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 990 (Fed.Cir. 1986). "Any competent source suffices to show the relevant purchasing public'sunderstanding of a contested term, including purchaser testimony, consumer surveys,dictionary definitions, trade journals, newspapers and other publications." In reDial-A-Mattress Operating Corp., 240 F.3d at 1344.

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In the context of Ginn, the Board considered two other related decisionsinvolving genericness: In re Gould Paper Corp.123 and In re The AmericanFertility Society. 124 These decisions provide a distinction between phrase andcompound marks. 25 Compound marks are "compound terms formed by theunion of words," such as the mark involved in Gould-"Screenwipe."'' 26

Phrase marks, on the other hand, are terms that are not 'joined' in any senseother than appearing as a phrase. 27 An example is the mark in AmericanFertility Society-"Society for Reproductive Medicine.' 28

Under Gould, compound marks may be generic if the evidence establishesthat each of the words of the compound mark is generic under the Ginn test andthe combination of the words has no different meaning other than that providedby the constituent words. 129 Hence, this standard provides "additionalassistance in determining the genericness of compound words."' 3° Usingdictionary definitions to illustrate the genericness of each individual term issufficient to demonstrate that the entire mark is generic. '31 Thus, proving thatthe terms together form a mark understood by the general public to be genericis unnecessary. 3 2 In contrast, one "cannot simply cite definitions and genericuses of the constituent terms of a mark" to prove genericness in a phrasemark.133 Rather, one must apply the Ginn test to the meaning of the phrase asa whole.'

34

In applying this framework to the "l-888-M-A-T-R-E-S-S" mark, theTTAB determined that a vanity telephone number "is more akin to a'compound' mark, inasmuch as it is comprised of two constituent elements ...which are joined to form a single compound term. '13' Therefore, the TTABindicated that in establishing the genericness of "l-888-M-A-T-R-E-S-S"under the Ginn two-part inquiry, the USPTO was entitled to Gould's

123. 834 F.2d 1017 (Fed. Cir. 1987).124. 188 F.3d 1341 (Fed. Cir. 1999).125. In re Dial-A-Mattress Operating Corp., 240 F.3d at 1345.126. Id.127. Id.128. In re American Fertility Society, 188 F.3d at 1345.129. In re Gould, 834 F.2d at 1019.130. In re American Fertility Society, 188 F.3d at 1348.131. In re Gould, 834 F.2d at 1018.132. See id. at 1018-19.133. In reAmerican Fertility Society, 188 F.3d at 1347.134. Id. at 1348.135. In re Dial-A-Mattress Operating Corp., 1999 WL 1186220, at *9, rev'd, 240 F.3d

1341 (Fed. Cir. 2001).

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"additional assistance."' 6 Hence, the USPTO did not need to present evidencethat the compound term had been generically used by the public. 137

The Board determined that the misspelled "M-A-T-R-E-S-S" element wasthe legal equivalent of the word "mattress."'38 As such, the term would beunderstood by the public to refer to the genus of services at issue in the case,namely, "telephone shop-at-home retail mattress sales." 139 The Board held thatbecause "l-888-M-A-T-R-E-S-S" was "comprised solely of a combination ofa designation (such as a toll-free telephone area code) which is devoid ofsource-indicating significance, joined with matter which, under the Ginntwo-part test, is generic for the identified goods or services, then the mark asa whole is generic and unregistrable."' 4°

On appeal,"'4 Dial-A-Mattress challenged the TTAB's holding.'42 Theappellant argued that Ginn and American Fertility Society demanded evidencethat the proposed mark is understood by the relevant public to refer to therelevant genus of goods or services.'43 The Federal Circuit agreed andconcluded that "There is no record evidence that the relevant public refers tothe class of shop-at-home telephone mattress retailers as'l-888-M-A-T-R-E-S-S.""1 44 "[A] phone number is not literally a genus orclass name, but is at most descriptive of the class," the court stated. 145

The court concluded that the TTAB erred by failing to consider the markin its entirety.'46 The Federal Circuit also rejected the Board's application ofGould and maintained that "a mnemonic formed by the union of a series ofnumbers and a word bears closer conceptual resemblance to a phrase than acompound word."'147 It agreed that the "888" element in the subject mark didnot possess source-indicating significance. 48 Nevertheless, the court

136. Id.137. Id.138. Id. at *4.139. Id.140. In re Dial A Mattress Operating Corp., 1999 WL 1186220, at *4. The TTAB took

judicial notice that toll-free area codes, such as 1-888, are used by numerous persons andbusinesses and are therefore devoid of any source-indicating meaning. Id.

141. The United States Court of Appeals for the Federal Circuit is the primaryreviewing court for Trademark Trial and Appeal Board decisions. See In re Dial-A-MattressOperating Corp., 240 F. 3d 1341 (Fed. Cir. 2001).

142. Id. at 1345.143. Id.144. Id. at 1346.145. Id.146. Id. at 1345-46.147. In re Dial-A-Mattress Operating Corp., 240 F.3d at 1346.148. Id.

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maintained that "888" is "not a word and is not itself a generic term for sellingby telephone."' 49 Consequently, the entire mark was not generic andregistration on the Supplemental Register was obtainable. 5 '

The Federal Circuit further observed that because telephone numbersconsist of only seven numbers and generally can only be used by one entity ata time, a business competitor with a telephone number corresponding to the"mattress" mnemonic "is already precluded from using and promoting thenumber."' 5' For all practical purposes, then, denying registrability to vanityphone numbers would shift the race from the USPTO to the telephonecompany.5 2 More importantly, the court acknowledged that, despite theregistration of "1-888-M-A-T-R-E-S-S," the competitors of Dial-A-Mattress"would...remain free to use 'mattress' to describe their goods and services informats other than the promotion of mnemonic telephone numbers consistingof the term."' 53

Ultimately, the court maintained that "1-888-M-A-T-R-E-S-S" was merelydescriptive of the owner's services because "it immediately conveys theimpression that a service relating to mattresses is available by calling thetelephone number.' 54 Nevertheless, because acquired distinctiveness wasshown, registration on the Principal Register was permitted. 155

IV. DOMAIN NAMES

There is a strong and undeniable correlation between vanity telephonenumbers and Internet domain names. 56 For example, both are structuredmnemonically for easy remembrance.'57 Therefore, instead of having toremember a long Internet protocol address 5

1 like "192.0.34.66," a consumer

149. Id.150. Id. at 1346-47.151. Id. at 1346.152. In reDial-A-Mattress Operating Corp., 240 R.3d at 1346.153. Id.154. Id. at 1346.155. Id. at 1348.156. See, e.g., Bird v. Parsons, 289 F.3d 865, 878 (6th Cir. 2002) ("[A] useful analogy

exists between domain names and vanity telephone numbers."); Brookfield Communications,Inc. v. West Coast Entm't Corp., 174 F.3d 1036, 1044 (9th Cir. 1999) ("Each web page hasa corresponding domain address, which is an identifier somewhat analogous to a telephonenumber or street address."); Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316, 1325 (9th Cir.1998) ("A domain name is similar to a 'vanity number' that identifies its source."); MTVNetworks v. Curry, 867 F. Supp. 202, 203 n.2 (S.D.N.Y 1994) ("Internet domain names aresimilar to telephone number mnemonics.

157. See Bird, 289 F.3d at 878.158. A web site, which is merely an interactive presentation of data, is accessed by an

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can type in the more memorable corresponding domain name,"www.widgets.com." Likewise, instead of having to remember"1-800-336-8478," the consumer can dial "1-800-D-E-N-T-I-S-T." Also, thequantity of both vanity numbers and domain names is restricted within thegiven area code or top-level domain.'59 Hence, there can only be one"1-800-D-E-N-T-I-S-T" in the 800 area code or one "www.widgets.com" inthe .com designation.

Both vanity phone numbers and domain names enable others to contact abusiness entity while incorporating the trade name or trademark of thatentity.160 Additionally, both can become valuable assets to a company.' 61

Through effective promotion and advertising, each of these mnemonic devicescan generate significant levels of goodwill.

Given the relative youth of the Internet, issues of domain name protectionare still surfacing. The courts' treatment of toll-free vanity numbers, thoughstill unsettled, foreshadows the treatment that the courts will likely providedomain names.

Like vanity telephone numbers, the initial disputes concerning trademarksand domain names involved issues of infringement in which some entity wasusing another tradename mark as a domain name. 16 2 The term "cybersquatter"was coined to refer to those who register a domain name that is the same as orrelated to the name or trademark of another entity. 63 The motives of thesesquatters vary. 164 These disputes continue, but, like vanity phone numbers, the

individual who dials into the host computer using the corresponding Internet protocol address.An Internet protocol address is a string of integer numbers separated by periods. AveryDennison Corp. v. Sumpton, 189 F.3d 868, 872 (9th Cir. 1999).

159. Diana Lock, Toll-Free Vanity Telephone Numbers: Structuring a TrademarkRegistration and Dispute Settlement Regime, 87 CAL. L. REV. 371, 381 (1999) ("[T]he uniquenature of domain names and toll-free telephone numbers dictates that only a restrictedquantity of both exists.").

160. Id. at 380.161. Id.162. Several cases have held that the use of a trademark in a domain name is an

infringement on the mark. See, e.g., Brookfield Communications, Inc. v. West Coast Entm'tCorp., 174 F.3d 1036, 1066-67 (9th Cir. 1999) (holding that "moviebuff.com" infringed onthe "Movie Buff" trademark); Ford Motor Co. v. Ford Fin. Solutions, Inc., 103 F. Supp. 2d1126, 1129 (N.D. Iowa 2000) (determining that the "Ford" and "Ford Financial" trademarkswere infringed by "fordfinancialservice.com"); OBH, Inc. v. Spotlight Magazine, Inc., 86 F.Supp. 2d 176, 198 (W.D.N.Y. 2000) (finding "buffalonews.com" to infringe and dilute thetrademark "The Buffalo News").

163. 4 MCCARTHY, supra note 9, § 25:77. A cybersquatter knowingly "reserves.. .adomain name consisting of the mark or name of a company for the purpose of relinquishingthe right to that domain name back to the legitimate owner for a price." Id.

164. See generally Susan Thomas Johnson, Note, Internet Domain Name andTrademark Disputes: Shifting Paradigms in Intellectual Property, 43 ARIZ. L. REV. 465, 476

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issue of paramount importance is the level of protection that domain namesdeserve. 65

A. How Domain Names Work

Domain names function like street numbers on the informationsuperhighway.' 66 Each name corresponds to a string of numbers, or InternetProtocol (IP) numbers, that serve as routing devices on the Internet; theyfacilitate communication on the Internet by identifying computers or "hosts"attached to the Internet.'67 Each domain name permits each Internet web siteto have a unique alphanumeric word. Domain names are often formed bycatchy words for ease of remembrance. 68

Domain names generally are comprised of two levels. The first level, or"top-level" (TLD), designates the type of organization that the domain nameidentifies. 69 Examples of TLDs include ".com" for commercial, ".org" fornon-profit organizations, ".net" for Internet infrastructure machines andorganizations, ".edu" for colleges and universities, ".gov" for governmentagencies, ".int" for international treaty organizations, and ".mil" for the UnitedStates military branches. 170 The second level of a domain name is the longermore specific element of the name. 17' This part usually describes the holder ofthe domain name or some aspect of its identity.'72

(2001).165. The passing of the Anticybersquatting Consumer Protection Act in 1999 and the

creation of the Uniform Domain Name Dispute Resolution Policy (often referred to as the"UDRP") by ICANN have provided much needed protection for trademark owners againstcybersquatters. See 15 U.S.C. § 1125 (d) (2000) (addressing cyberpiracy prevention);ICANN, UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY, athttp://www.icann.org/dndr/udrp/policy.htm (adopted Aug. 26, 1999).

166. Johnson, supra note 164, at 468.167. See ICANN, DOMAIN NAME REGISTRATION QUESTIONS, at

http://www.icann.org/general/faql.htm (last visited Oct. 2, 2002).168. Johnson, supra note 164, at 468.169. Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 872 (9th Cir. 1999).170. TMEP, supra note 10, § 1215.01, available at

http://www.uspto.gov/web/offices/tac/tmep/ (last visited Feb. 14, 2003). Countries also havecorresponding country codes. For example, Canada has the TLD ".ca" and Japan has the TLD".jp." Id. "Each country determines who may use their code. For example, some countriesrequire that users of their code be citizens or have some association with the country, whileother countries do not." Id.

171. See Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316, 1318 (9th Cir. 1998).172. See id. Generally a domain name is preceded by "http://www." The "http://" is

indicative of the protocol used to transfer information. The "www" refers to World WideWeb. Avery Dennison Corp., 189 E3d at 872 n.2.

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The Internet Corporation for Assigned Names and Numbers (ICANN) isthe non-profit, private-sector corporation created by the U.S. government inOctober 1998 to coordinate Internet technical functions, including theassignment of Internet domain names and IP numbers.173 ICANN certifiescompanies as domain name registrars."' At one time, there was only oneregistrar, Network Solutions, Inc. 175 Today there are well over threehundred.176 Only a domain name registrar is permitted to access and modifythe master database of domain names. 177 "Once a domain-name combinationis reserved, it cannot be used by anybody else, unless the first registrantvoluntarily or otherwise relinquishes its registration."' 78

B. Domain Names as Trademarks

The principal purpose of every domain name is largely technical; it acts asan address on the Internet.'79 Domain names locate businesses on the WorldWide Web. 80 The user familiar with the domain name is connected to theappropriate web site once he or she types the name into a web browser.'8 'Similarly, the user can enter the domain name into a search engine, which willthen generate a list of sites related to the key word entered. 82

In addition to this technical purpose, a domain name can function as atrademark. Since the emergence of the Internet domain name system, theUSPTO has received a significant number of applications for marks composedof domain names. 183 These applications are subject to the same requirementsas other applications for federal trademark registration.' 84

173. See ICANN at http://www.icann.org/ (last visited Feb. 14, 2003).174. Id.175. Avery Dennison Corp., 189 F.3d at 872 n.1.176. See ICANN, ICANN-ACCREDITED REGISTRARS, at

http://www.icann.org/registrars/accredited-list.html (last visited Feb. 14, 2003) (listingcurrent registrars).

177. See ICANN, DOMAIN NAME REGISTRATION QUESTIONS, supra note 167.178. Avery Dennison Corp., 189 F.3d at 872.179. Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316, 1318 (9th Cir. 1998).180. Brookfield Communications, Inc. v. West Coast Entm't Corp., 174 F.3d 1036,

1044 (9th Cir. 1999) ("A specific web site is most easily located by using its domain name.").181. Id.182. Id. at 1045. After entering a domain name into a web browser, such as Netscape's

Navigator or Microsoft's Internet Explorer, the corresponding web site will appear on thecomputer screen. Id. at 1044.

183. TMEP, supra note 10, § 1215, available athttp://www.uspto.gov/web/offices/tac/tmep/ (last visited Feb. 14, 2003).

184. UNITED STATES DEP'T OF COMMERCE, PATENT AND TRADEMARK OFFICE,EXAMINATION GUIDE No. 2-99: MARKS COMPOSED, IN WHOLE OR IN PART, OF DOMAIN

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To attain protection as a trademark, the domain name must be more thanjust a web site locator.'85 It must also act as an identifier of the origin of thegoods or services. 186 Hence, the domain name must be used in a manner thatwill be perceived by potential customers as having source-indicatingsignificance and not merely as an indicator of the address used to access a website. "'

C. Registration Not Permitted for Generic Domain Names

The USPTO states that a mark composed of a generic term and a top-leveldomain will be refused registration because the mark is generic and thetop-level domain has no trademark significance. '88 Such marks are not eligiblefor registration on either the Supplemental Register or the Principal Register. 189

Hence, under this framework, the mark "toothpicks.com" for toothpicks soldvia the Internet is unregistrable on either the Principal or SupplementalRegister. Similarly, marks such as "cars.com" for cars sold online and"construction.com" for construction services offered online are summarilyrejected.

According to the USPTO, "When a trademark... is composed...of adomain name, neither the beginning of the URL ('http://www.') nor the[top-level domain] has any source-indicating significance."' 9° The USPTO

NAMES, available at http://www.uspto.gov/web/offices/tac/notices/guide299.htm (Sept. 29,1999).

185. TMEP, supra note 10, § 1215.02(a), available athttp://www.uspto.gov/web/offices/tac/tmep/ (last visited Feb. 14, 2003).

If the proposed mark is used in a way that would be perceived as nothing more thanan Internet address where the [domain name owner] can be contacted, registration[on the Principal Register] must be refused [by the USPTO]....

If the specimens of use fail to show the domain name used as a mark and theapplicant seeks registration on the Principal Register, the examining attorney mustrefuse registration on the ground that the matter presented for registration does notfunction as a mark.

Id.186. TMEP, supra note 10, § 1209.03(m), available at

http://www.uspto.gov/web/offices/tac/tmep/ (last visited Feb. 14, 2003).187. See id. at § 1215.02(a). By way of example, if a domain name is used in close

proximity to language referring to the name as an address, such as "visit us on the web atwww.abc.com," or is used in conjunction with other information on how to contact the domainname owner (such as a phone or facsimile number), then the domain name does not functionas a trademark. Id; see also In re Eilberg, 49 U.S.P.Q. 2d 1955, 1957 (TTAB 1998).

188. TMEP, supra note 10, § 1215.05, available athttp://www.uspto.gov/web/offices/tac/tmep/ (last visited Feb. 14, 2003).

189. Id.190. Id. § 1215.02.

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likens the top-level domain to terms such as "Inc." and "Co." in a givenmark. 191

D. The TTAB Weighs In

In the recent decision In re Martin Container, Inc., the TTAB appears tohave adopted the USPTO's position on generic domain name marks. 92 In thiscase, the TTAB directly addressed, for the first time, the registrability ofgeneric domain names. 93 The applicant sought to register the mark"container.com" for, among other things, "retail store services and retailservices offered via telephone featuring metal shipping containers."' 94 Themark was initially refused registration by the USPTO's attorney on thePrincipal Register under Section 2(e)(1) of the Lanham Act'95 because it wasmerely descriptive of the services identified in the application. 196 The applicantthen sought registration on the Supplemental Register, which was refusedunder Section 23 of the Lanham Act 197 because the applicant's mark wasincapable of identifying its services and distinguishing them from servicesprovided by others.' 98 The USPTO reasoned that because the mark was acombination of the term "container," which is generic for retail servicesinvolving containers,' 99 and the top-level domain ".com," which has nosource-identifying significance, the mark did not warrant registration on theSupplemental Register.2"'

The applicant argued that the Federal Circuit's decision inDial-A-Mattress justified registration of "container.com" because of the

191. Id. § 1215.04.192. In re Martin Container, Inc., 65 U.S.P.Q. 2d 1058, 1060 (TTAB 2002).193. Id.194. Id. at 1059. The use-based application was filed on September 15, 1998 and

initially recited the services as "buying, selling, and renting metal shipping containers." Id.The recitation of services was later amended. Id.

195. 15 U.S.C. § 1052(e)(1) (2000).196. In re Martin Container, 65 U.S.P.Q. 2d at 1059.197. Section 23 of the Trademark Act, 15 U.S.C. § 1091, in relevant part, reads as

follows: "[A]ll marks capable of distinguishing applicant's goods or services and notregistrable on the principal register.. .which are in lawful use in commerce by the ownerthereof, on or in connection with any goods or services may be registered on the supplementalregister...." 15 U.S.C. § 1091 (a) (2000).

198. In re Martin Container, 65 U.S.P.Q. 2d at 1059.199. A term which is generic for a type of goods is also generic for retail store services

featuring those goods. See In re A La Vieille Russie, Inc., 60 U.S.P.Q. 2d 1895, 1900 (TTAB2001); In re Log Cabin Homes Ltd., 52 U.S.P.Q. 2d 1206, 1209 (TTAB 1999); In re BonniKeller Collections Ltd., 6 U.S.P.Q. 2d 1224, 1227-28 (TTAB 1987).

200. In re Martin Container, 65 U.S.P.Q. 2d at 1059.

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similarities between vanity phone numbers and domain names. 2°' The TTAB

disagreed and affirmed the refusal to register the mark because of the mark'sgenericness.2 °2

The Board noted the similarities between the domain name at issue and thetelephone number "l-888-M-A-T-R-E-S-S" in Dial-A-Mattress, stating that"just as in the Dial-A-Mattress case, what is sought to be registered is not thename of the genus or category of services ..... 203 The TTAB further explainedthat the domain name was similar to Dial-A-Mattress in that the combinationof "container" and ".corn," when examined in its entirety, "is not the commondescriptive name of the services at issue. ' 2°

However, the TTAB distinguished the domain name issue fromDial-A-Mattress in three ways. First, the Board noted that the mark"container.com" is not a telephone name, but rather an Internet address. 20 5

Second, the TTAB noted that the mark "I-888-MATTRES" "featured amisspelled generic term instead of the usual seven-digit number following thearea code" deemed, in Dial-A-Mattress, to resemble a phrase more than acompound word.2 °6 Notably, "container.com" was comprised of a correctlyspelled generic term followed by the ".com" element, which indicates that theapplicant is a commercial enterprise.207 Lastly, the Board distinguished the twomarks by observing that while telephone numbers are "unique" because eachten-digit number can only be used by one entity at a time, domain names canconsist of sixty-three numbers or characters, resulting in multiple domainnames containing the same root terms combined with various numbers orletters as prefixes or suffixes.0 8 Consequently, allowing registration of theroot term(s) would hinder competitors who may need the root term "as part oftheir own domain names and trademarks. 20 9

Given these differences, the TTAB surmised that "container.com" cannotbe characterized as a phrase like "l-888-MATTRES."210 Instead, the Boarddetermined that it was a compound word in which the combination of"container" and ".com" was no more capable of functioning as a source

201. Id. at 1061.202. Id.203. Id.204. Id.205. In re Martin Container, 65 U.S.P.Q. 2d at 1061.206. Id.207. Id.208. Id.209. Id. (noting the TTAB's use of this argument in regard to the root term

"container").

210. In re Martin Container 65 U.S.P.Q. 2d at 1060.

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indicator than the individual terms.2I' As such, genericness may be foundmerely by applying Gould212 and showing that "the separate generic wordshave a meaning identical to the meaning common usage would ascribe to thosewords as a compound. ' 213

E. Not the Final Word

The TTAB's reasons for denying protection for the mark "container.com"are questionable and guarantee that the decision will not be the final word.2 14

The distinguishing factors between mnemonic telephone numbers and domainnames cited by the TTAB fail to justify different treatments of these types ofmarks.

First, the fact that one is a telephone number while the other is a domainname is insignificant. This basic difference should be of little, if any,consequence to the overall determination regarding genericness. There arevarious types of marks, including numbers, colors, and configurations, thathave received protection from the courts.215 The mere fact that the marks areof a different type should not have been a determinative factor in the Board'sassessment.

Similarly, the Board's observation that the marks are different because themark in Dial-A- Mattress was a toll-free number comprised of a misspelledgeneric term combined with numbers, whereas "container.com" was a markwith a correctly spelled generic term followed by ".com" is disconcerting. Noimport should be given to the fact that one contains a correctly spelled termwhile the other does not. When conducting an analysis of marks, novelspellings are often considered the equivalent of the properly spelled term. 216

211. Id.212. See discussion supra Part I1.B.3.213. In re Martin Container, 65 U.S.P.Q. 2d at 1060-61.214. One month after the refusal to register "container.com" was issued, the owner,

Martin Container, Inc., filed a request for reconsideration of the Board's ruling, arguing thatthe Board erred in reaching its decision. Upon reconsideration, the TTAB stood by its originalruling. In re Martin Container, Inc., Serial No. 75/553,426, 2002 WL 2022676, *1, *1(Trademark Tr. & App. Bd. Sept. 4, 2002).

215. See Int'l Trademark Ass'n, Amicus Letter of the International TrademarkAssociation in Libertel Groep B. V, 91 TRADEMARK REP. 908,909-10 (2001) (discussing thefact that color may function as a trademark); Laurence R. Hefter, Protection of ProductConfigurations in the United States, 295 PLI/PAT 113, 115-17 (1990) (discussing theincrease in trademark registration of product configurations).

216. For example, if a term is merely descriptive, a novel spelling of the term is alsomerely descriptive if purchasers would perceive the different spelling as the equivalent of thedescriptive term. Clarke v. K-Mart, 473 F. Supp. 1299, 1301 (W.D. Pa. 1979); In re TheState Chemical Mfg. Co., 225 U.S.P.Q. 687 (TIAB 1985).

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Additionally, the TTAB made a disputable assumption when it assertedthat the marks are different because ".com" indicates that the mark's owner isa commercial enterprise, whereas the toll-free area code does not indicate thatthe owner is a commercial entity.217 Like the ".com" element of a domainname, a strong correlation exists between the 1-888 code (and other toll-freearea codes) and commercial entities. Indeed, toll-free service was specificallycreated for large business entities.218

The Board's finding that telephone numbers are "truly unique" because "agiven ten-digit number can be used by only one entity at a time" is alsoproblematic. 219 The Board differentiated these "truly unique" marks fromdomain names by observing that domain names may be comprised of up tosixty-three characters.22 ° Because of this difference, the TTAB inferred thatit would be possible for competing businesses to have domain namescontaining the same core term or element, but with different numbers or lettersas prefixes or suffixes. 22' The Board stated that the competitors of a domainname owner utilizing a generic term "may in fact be using or have acompetitive need to use" the generic term as part of their domain names andtrademarks.222 Thus, the TTAB implied that the competitors of owners oftelephone number marks do not share in this dilemma because telephonenumbers are comprised of only ten characters or numbers.223

Hence, the TTAB's reasoning in determining that Dial-A-Mattress had nobearing on its Martin Container decision is disputable. The distinctions thatthe Board attempted to make between the marks in Dial-A-Mattress andMartin Container are inconsistent and will undoubtedly be challenged.224

217. In reMartin Container, 65 U.S.P.Q. 2d at 1061.218. Toll-free calling was specifically invented by AT&T to relieve the burden of

operators handling collect calls to businesses. More than half a million businesses andgovernment agencies accept toll-free calls. AT&T Toll-Free, supra note 64.

219. In re Martin Container, 65 U.S.P.Q. 2d at 1061.220. Id.221. Id.222. Id.223. Id.224. The TTAB continues to apply similar reasoning in denying other generic domain

names protection. See, e.g., In re FMR Corp., Ser. No. 75/871,163, 2002 TTAB LEXIS 596,at *14 (TTAB Sept. 19, 2002) (refusing registration of the mark "401k.com" on theSupplemental Register); In re CyberFinancial.Net, Inc., Ser. No. 75/482,561, 2002 TTABLEXIS 551, at * 1 (TTAB Aug. 28, 2002) (denying the owner of "bonds.com" a registrationon the Supplemental Register); In re John Brian Losh, Inc., Ser. No. 75/351,968, 2002 TTABLEXIS 502, at *21 (TTAB July 31, 2002) (refusing protection for "luxury-realestate.com" onthe Supplemental Register).

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V. PROTECTION IS WARRANTED

Traditional trademark jurisprudence is more than capable of providingprotection for domain names that spell generic terms. Absolute protection is notnecessary; extracting the generic elements of a domain name from commerceis not required. However, protection from other confusingly similar domainnames is practicable.

The TTAB's treatment of such marks must be reconsidered. Theincreasing support for protecting and registering generic vanity phone numbers,as evidenced by the Second Circuit and Federal Circuit's opinions, evinces theneed to extend such protection to generic domain names.225 Registration on theSupplemental Register should be permitted, as should registration on thePrincipal Register with a showing of acquired distinctiveness.

A. Domain Name Marks are Phrases

Failing to provide protection for domain names utilizing a generic termdemonstrates a clear disregard for one crucial aspect of the analysis of amark-consideration of the mark in its entirety. The Supreme Court stated that"The commercial impression of a trade-mark is derived from it as a whole, notfrom its elements separated and considered in detail. '2 26 The validity of adomain name, like other marks, should not be decided by an examination of itsparts. Instead, its validity should be determined by viewing the mark as awhole. The domain name is comprised of more than just the second leveldomain. The top-level domain should not be excised when evaluating thedistinctiveness of the overall mark.

A domain name is constructed much like a vanity telephone number and,as such, similar treatment is justified. Like the telephone number inDial-A-Mattress, a domain name resembles a phrase rather than a compoundword mark. Like the "888" area code in the mark "1-888-M-A-T-R-E-S-S,"a top-level domain name such as ".com" is not a word and is not generic for theservices of the domain name. It is a code of reference used to signify the typeof organization identified by the domain name. Each of these codes-"888"

225. At this point in time, it appears that the Third Circuit's view, as illustrated inDranoff-Perlstein, is the minority view in this area of law. Christie L. Branson, Was $7.5Million a Good Deal For Business.com? The Difficulties of Obtaining Trademark Protectionand Registration for Generic and Descriptive Domain Names, 17 SANTA CLARA COMPUTER& HIGH TECH. L.J. 285, 308-10 (2001).

226. Estate ofP.D. Beckwith, Inc. v. Comm'r of Patents, 252 U.S. 538, 545-46 (1920).

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and ".com"-when combined with a word element like "mattress" or"container," create a brief expression.227 In other words, a phrase is created.

The issue at hand is analogous to the facts in American Fertility Society.There, the Federal Circuit found that the terms "Society for ReproductiveMedicine" were not "'joined' in any sense other than appearing as a phrase. 22 1

Likewise, the terms of a domain name are not "joined" like those of acompound word. Rather, the period or "dot" separates the top-level from thesecond level name, much like the dash separates the numbers and letters of avanity phone number or a space separates two words situated side-by-side ina traditional word mark.229

Therefore, the two-part Ginn inquiry should be applied to a domain nameas a whole.23° It is insufficient for the USPTO to show that the individualwords in the phrase are generic in light of the Federal Circuit's genericnessanalysis. Instead, the USPTO must demonstrate that the phrase as a whole hasa generic meaning.

Interestingly, the TTAB has likened the structure of a vanity phone numberto that of a domain name mark. Rejecting the American Fertility Societygenericness test, the TTAB stated, in Dial A Mattress, that such a test forvanity telephone numbers would result in a per se rule that telephone numbermarks consisting of generic matter combined with a toll-free telephone areacode could never be refused registration on the ground of genericness.23" ' TheBoard specifically indicated that such a result would "by logical extension"apply to "'domain name' marks consisting solely of generic terms combinedwith '.com' or other non-distinctive matter. ' 232 It appears that the TTAB isnow trying to retract this analogy in Martin Container.

227. The word "phrase" is defined as "a characteristic manner of style or expression."or "a brief expression." WEBSTER'S THIRD NEW INT'L DICTIONARY OF THE ENGLISHLANGUAGE UNABRIDGED 1704 (1993).

228. In re American Fertility Society, 188 F.3d 1341, 1348 (Fed. Cir. 1999).229. Contrast this with the compound word "screenwipe" in In re Gould Paper Corp.,

834 F.2d 1017, 1019 (Fed. Cir. 1987). The Federal Circuit held that "screenwipe" wasgeneric for premoistened antistatic cloths used for cleaning computer and television screens.In so ruling, the court remarked that "Gould has simply joined the two most pertinent andindividually generic terms applicable to its product, and then attempts to appropriate theordinary compound thus created as its trademark." Id.

230. See discussion supra Part 1l.B.3.231. In re Dial A Mattress, Ser. No. 75/131,355 1999 TTAB LEXIS 623, at *13 n.12

(TTAB Nov. 2, 1999).232. Id.

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B. Source Indicative

23A domain name intrinsically denotes the source of the goods or services.A consumer reasonably understands that a domain name is a means by whichto access or communicate with the source of the product offered in themarketplace. 34 Because protection offered under the Lanham Act depends, inpart, on a mark's ability to identify the source of the item or service, it logicallyfollows that a domain name, even one consisting of generic matter, should notbe deemed generic as a whole. 35 Thus, a certain level of protection should beafforded to the owners of domain names consisting of generic terms.

The Lanham Act fails to furnish the means by which to determine whethera mark is generic. Lacking such guidance, courts have developed a frameworkto make such assessments. The meaning that the consumer attaches to the markis at the heart of these statutory tests. 236 Those marks considered by the publicto be the common commercial names for the products themselves are notprotected.237 Those marks regarded as pointing to the source or maker of theproducts are deemed protectable z38

More than seventy years ago, in Bayer Co. v. United Drug Co.,239 JudgeLearned Hand created the "buyer understanding test, '240 which asks the singlequestion: "What do buyers understand by the word for whose use the partiesare contending?" 24' Judge Hand's holding that "aspirin" was a generic term foracetyl salicylic acid became the genesis of all trademark analysis.242 That is,

233. DOMAIN NOTES, Ultimate Domain FAQ,http://www.domainnotes.com/faq/article/0,,3371 348481,00.html (last visited Feb. 13, 2003).

234. Id.235. 2 MCCARTHY, supra note 9, § 11:83 ("[Tlhe strength of a mark depends ultimately

on its distinctiveness, or its 'origin-indicating' quality, in the eyes of the purchasingpublic....").

236. Id. § 12:1A [trade]mark answers the buyer's questions "Who are you? Where do you comefrom?" "Who vouches for you?" But the name of the product [or generic term]answers the question "What are you?" Many competitive products will give thesame answer, regardless of source of origin-e.g., a personal computer, a type ofrestaurant, a bar of soap. Such generic designations tell the buyer what the productis, not where it came from.

Id.237. Id.238. Id.239. 2 MCCARTHY, supra note 9, § 12:11 (citing Bayer Co. v. United Drug Co., 272 F.

505, 509 (D.N.Y 1921)).240. Id.241. Id. § 12:4 (quoting Bayer Co., 272 F. at 509).242. Id.

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what does the ordinary consumer think the word means-the generic name ofthe product or a mark indicating merely one source of that product?243

Later, in Kellogg Co. v. National Biscuit Co., the Supreme Courtaddressed whether the term "Shredded Wheat" had become generic andexpanded the buyer understanding test by developing the widely-used primarysignificance test.244 Under this test, a party seeking to prove that a mark isgeneric must prove that its primary significance, in the minds of consumers, isthe item itself and not the producer.245 Thus, above all else, the mark must beconsidered to point to the source.246

Domain names naturally possess this ability. Although some domain namesdo not act as trademarks, a business can generate goodwill through its domainname to the point that the public automatically associates the domain namewith the retailer or service provider. A consumer interested in purchasing atelevision can easily surmise that "television.com" is not the name of theproduct he wishes to purchase (because that is television), but the means tocontact the source in order to make a purchase. Logically speaking, it is alsoreasonable for the consumer to not only consider "television.com" as the meansof contact, but the very identity of the desired source, if it is indeed used as atrademark and not merely as a cyberspace address.

If a domain name is used only like a telephone number or addressinconspicuously printed in small letters on business letterhead stationery,business cards, and advertisements, then it is only being used as a domainname in order to tell how to contact the person or business in cyberspace.247

But if the same domain name has, in fact, been used much like a traditionalmark with its concomitant qualities-larger-sized print, capital letters, stylizedfont, bright color-then its purpose takes on greater prominence.2 48 Thisprominence leads the viewer to see the domain name as a symbol of origin.249

"Only then does it perform the role of a mark [by identifying and distinguishing

243. Id.244. Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 118 (1938). This test has

become the traditional test for genericness. "The 1984 'Anti-Monopoly' amendments to the[Trademark Act] require that 'The primary significance of the registered mark to the relevantpublic ... shall be the test for determining whether the registered mark has become thegeneric name of goods or services on or in connection with which it has been used."' 2MCCARTHY, supra note 9, § 12:57.

245. Kellogg Co., 305 U.S. at 118 ("It must show that the primary significance of theterm in the minds of the consuming public is not the product but the producer.").

246. The number of consumers that must consider the mark generic was defined as themajority in Dupont Cellophane Co. v. Waxed Products Co., 85 F.2d 75, 80 (2d Cir. 1936).

247. 1 MCCARTHY, supra note 9, § 7:17.1.248. Id.249. Id.

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a] source."25 The manner and use of the domain name, therefore, becomespivotal. Nevertheless, domain names found to act like trademarks aresource-indicative and deserve protection, regardless of the presence of genericmatter.

C. Monopolistic Concerns

Concerns about competition should not be an obstacle to extendingprotection to generic domain names. In our increasingly competitive economy,judicial and economic efficiency demand that an owner's investment in a markand the goods and services be guarded. Strengthening the value of a trademarkrequires "the expenditure of great effort, skill and ability., 251 Any attempts "totake a 'free ride' on the trademark owner's good will and reputation" shouldbe impeded.252 The efforts and expenditures of trademark owners of domainnames that use generic terms are no less significant than those of othertrademark owners. 3 Although such marks may not be as strong as thoseutilizing arbitrary, fanciful, or suggestive terms, their power as distinguishingsymbols must be acknowledged. As the Dial-A-Mattress court noted withregard to vanity telephone numbers, "A rule precluding registrability [andprotection would] merely [shift] the race from the [USPTO] to the telephonecompany. 254 Similarly, denying registration and protection for generic domainnames directs the race toward all the domain name registrars.

Protection of generic domain names is not tantamount to safeguarding thegeneric matter itself. Protecting the domain name does not stop others fromexercising their right to use the same generic term for their goods and services;it merely prevents them from using it in the form that is confusingly similar tothe domain name. Hence, the extension of protection to generic domain namesshould be limited to ensure that the generic matter remains available for use byother mark holders in the market.255

For example, protection for "perfume.com" would not prohibit otherperfume manufacturers from using marks like "Meadow Wood Perfume" or"dewdropperfume.com." However, marks like "pperfume.com" or"perfuuumes.com" would be considered confusingly similar. Traditional

250. Id.251. Id. § 2:30 (quoting Smith v. Chanel, Inc., 402 F.2d 562, 568 (9th Cir. 1968)).252. 1 MCCARTHY, supra note 9, § 2:30.253. These owners still have to perform marketing research, pay for advertising, and

expend energy in the development of good will.254. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346 (Fed. Cir. 2001).255. Other commentators have called for similar levels of protection for vanity phone

numbers. See, e.g., J. Michael Monahan, Comment, Waiting By the Phone: Why TelephoneNumber Mnemonics Warrant Trademark Protection, 58 LA. L. REV. 281, 288-89 (1997).

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trademark analysis may still be applied to determine the likelihood ofconfusion. Consequently, consumer protection, the cornerstone of trademarklaw, is affirmatively upheld. Additionally, the danger of conferring a monopolyon the holder of a generic domain name is offset by ensuring that competitorsare still able to use the generic term in other contexts for advertising andtrademark purposes.256

VI. CONCLUSION

Internet and e-commerce gave birth to a new generation of trademarks-domain names. Traditional trademark jurisprudence welcomed many of thesemarks into the fold of protectable and registrable matter. Those whichincorporate generic terms, however, face an uphill battle when it comes toprotection.

Marks such as "container.com," "luxuryestates.com," and "bonds.com"are presently barred from registration on either the Principal or SupplementalRegistrars of the USPTO. Fears that protection of these marks is equivalent toremoving the generic term involved from commerce are behind the policiesdenying registrability. Concerns that competitors will be precluded from usingthe generic term to describe their goods and services have arisen.

These fears and concerns can be alleviated through the extension of limitedprotection for the domain name, not the generic term. By protecting genericdomain names from confusingly similar domain names, the interests of theowners of generic domain names will be secured while the generic elements oftheir marks will remain available for their competitors.

Courts should turn to the legal history of vanity phone numbers utilizinggeneric terms for assistance. Domain names are often compared to vanityphone numbers.257 There is growing support for protecting generic phonenumbers. The Second Circuit determined that trademark protection for vanityphone numbers is warranted. Similarly, the Federal Circuit also appears to

256. The "1-888-M-A-T-R-E-S-S" mark has, after all, existed along with other marksin the marketplace that incorporate the generic term "mattress." Similarly, the mark"I-800-FLOWERS" for "receiving and placing orders for flowers and floral products" hasbeen a valid registered mark since 1975 (U.S. Reg. 1,009,717) and has existed despite thepresence of other marks containing the term "flower(s)." See United States Patent andTrademark Office, Trademark Applications and Registrations Retrieval,http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=72443371 (last visited Feb. 6, 2003);United States Patent and Trademark Office, Trademark Electronic Search System,http://tess2.uspto.gov/bi n/showfield?f=toc&state=cu71s5.1.1 &p-search=searchss&pL=504(last visited Feb. 13, 2003) (generating search results for presence of other marks containing"flower").

257. Richard D. Harris, Trademark and Copyright Law on the World Wide Web: ASurvey of the Wild Frontier, 588 PL/PAT 553, 560 (2000).

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support registration for these mnemonic trademarks. Generic domain names aresimilarly worthy of trademark protection.

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