USPTO Changes Policy Regarding Use of Terms 'Internet' and 'Intranet' In Trademark Applications

Author:Mr James D Nohl
Profession:Holland & Knight LLP

Trademark practitioners recently received welcome news that United States

Patent and Trademark Office (USPTO) had updated certain of its trademark

application policies. On August 3, 2000, the USPTO issued an Examination Guide

indicating that the terms ìInternetî and ìIntranetî would be deemed

acceptable terms for use in identification of goods and services in connection

with federal trademark applications. Prior to such announcement, the USPTO would

not permit such terms to be used due to the existence of a federal trademark

registration that previously had been issued for the mark INTERNET. Instead,

trademark practitioners had been relegated to use cumbersome and wordy phrases

such as ìglobal computer networkî and ìinternal computer networkî to

describe the concepts of the ìInternetî and ìIntranet.î

The registration for the mark INTERNET that prevented the USPTO from

accepting use of the terms ìInternetî or ìIntranetî (the latter term

being precluded because of its close similarity in sound, appearance and general

meaning to the former) was issued by the USPTO in 1989 - before the coming of

age of the ìInternetî as the general public knows it today. The registration

for this mark covered use of the term in connection with certain specific

communication services in the banking industry. This federal trademark

registration essentially precluded the USPTO from being able to accept use of

the terms ìInternetî or ìIntranetî in other federal trademark

applications because such use arguably could be construed to infringe the

trademark rights of the holder of the INTERNET federal trademark registration.

On July 18, 2000, however, the trademark registration for the INTERNET mark was

cancelled, thereby opening up the ability of...

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