Application for Trademark Registration By Itself Does Not Qualify as a Right

A certificate of registration satisfies the threshold requirement for maintaining a UDRP proceeding while a mere “intent to use” application to register a trademark or registration on the Supplemental Register does not. The consensus is that no “presumption [of validity] arises from a pending application to register a mark,” Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO October 17, 2001). This was particularly highlighted in Martha Stewart Living Omnimedia, Inc. v. Joe Perez, FA0904001259275 (Nat. Arb. Forum June 24, 2009) in which the USPTO initially rejected the trademark for registration on the Principal Register. The Respondent in that case may very well have learned about the Complainant’s plans from scanning the TESS database, but “Everyday Eating” is a purely descriptive phrase and Complainant’s trademark post-dated the registration of the domain name.

If the complainant argues that its trademark nevertheless pre-dates the registration of the domain name, it must offer proof of secondary meaning to pass the threshold. This is not achieved by the complainant pointing to its representation on the trademark application of an earlier “first use in commerce” date. While proof of a right for a registered trademark is simply a copy of the certificate, proof of secondary meaning is a considerable undertaking. The Complainant in Kaizen Applications, LLC v. Private Whois Service, FA1005001324496 (Nat. Arb. Forum) (<blackhatworld.org>) is stopped at the threshold simply because it did not understand that mere assertion is not equivalent to proof of a common law trademark.

The “Complainant” (noted the Panel) “has provided evidence that it applied to register Complainant’s Domain as a trademark.” It also asserted that it has a common law trademark in the domain name. However, neither of these assertions “establish any enforceable trademark rights in [the disputed] Domain [Name].” In order to qualify, to cross the threshold, the complainant must first “identify the jurisdiction in which it is claiming common law rights and elucidate the relevant legal principles of that jurisdiction with a view to justifying its allegations of acquired common law rights. This is important because not every country recognizes common law rights, and the relevant law of each jurisdiction has its own nuances.” This view is questionable. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions states that “Unregistered rights can arise even when the complainant is based in a civil law jurisdiction,” Paragraph 1.7. The more important deficiency and controlling one is that the Complainant failed to “demonstrate that the trademark is, in fact, associated by the relevant public with the complainant’s goods or services.” The Panel continued with advise that complainants alleging common law trademark should make note of:

It must prove that at least some goodwill and reputation has been generated in connection with the mark as a consequence of active use in commerce. In other words, Complainant must provide credible evidence establishing that the common law trademark on which it relies has acquired distinctiveness.

The consensus is that this is done by the complainant offering evidence of (1) the length and continuity of a mark’s use, (2) sales, advertising, and promotional activities, (3) expenditures relating to promotion and marketing, (4) unsolicited media coverage, and (5) sales or admission figures. See also Mitek Corporation v. Xedoc Holding SA, FA1007001337379 (Nat. Arb. Forum August 18, 2010): “Complainant has not provided any evidence in the form of advertising expenses, unsolicited media coverage, consumer or other third-party recognition, which are traditional means of proving common law rights.”

Levine Samuel, LLP <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com

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