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