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Consequences of Disclaiming Exclusive Rights

World Publications, LLC v. GMW Digital, LLC, D2009-1737 (WIPO February 8, 2010) is a brief decision. The complaint was denied on the grounds that the Respondent had registered the disputed domain names – <privatemeetingssummit.com> and <privatemeetingsummit> – prior to (in fact, many years earlier) than the Complainant’s acquisition of a trademark right. I am limiting this Note to the discussion in Footnote 1 of the decision which briefly discusses the status of the trademark, PRIVATE MEETINGS SUMMIT. The Panel reviewed the automated records of the PTO and found, first, that the Examining Attorney had initially rejected the application, and when it was approved upon proof of continuous use for 5 years, required the Complainant to disclaim “summit.” Under 15 U.S.C. § 1052(f) a mark that has been rejected as merely descriptive may be registered on the Principal Register upon proof of acquired distinctiveness, or secondary meaning.

Although not the dispositive issue in World Publications, disclaiming words in the trademark can be fatal to a holder’s claim, as it was in Loma Linda University Adventist Health Sciences Center, Loma Linda University and Loma Linda University Medical Center v. Development Services, StateVentures, LLC, D2009-1059 (WIPO December 18, 2009) (<lomalinda.com>) where the Complainant disclaimed “Loma Linda” in its two trademarks, LOMA LINDA UNIVERSITY 1905 TO MAKE MAN WHOLE and LOMA LINDA UNIVERSITY TO MAKE MAN WHOLE CENTER FOR SPIRITUAL LIFE AND WHOLENESS. Similarly, Combined Insurance Group Ltd v. Xedoc Holding SA c/o domain admin., FA0905001261545 (Nat. Arb. Forum June 26, 2009) (<cheapautoinsurance.com>) where the Complainant was required to disclaim “auto insurance” in its descriptive trademark CHEAP AUTO INSURANCE.

The general rule is that “when descriptive or generic words are disclaimed in a registration on the Principal Register, the legal effect is that the registration does not evidence any trademark rights in the disclaimed words; rather, those words are protected only when used with the mark as a whole,” Advance News Service Inc. v. Vertical Axis, Inc. / Religionnewsservice.com, D2008-1475 (WIPO December 11, 2008) (<religionnewsservice.com>). The Complainant disclaimed exclusive right to use of “news service” apart from the mark as shown. Its trademark RELIGION NEWS SERVICE is registered on the Supplemental Register and although the Complainant has been using the term for half a century was unable to persuade the Panel that it had acquired secondary meaning.

Even if there were not an issue of timing and the Complainant had not misstated the facts, World Publication’s PRIVATE MEETINGS SUMMIT suffers from the same disability as the other examples. It has no monopoly of a descriptive phrase, in this case used by the Respondent who demonstrated that it was in the same industry and provided similar services.

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

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One Response to Consequences of Disclaiming Exclusive Rights

  1. Ben D. Manevitz March 3, 2010 at 4:46 pm #

    Keeping the focus narrowly on the question of disclaimer…

    The initial rejection supports the contention that PRIVATE MEETINGS SUMMIT was merely descriptive at the time of application, and the subsequent registration on the Principal Register, even with the disclaimer, supports the proposition that PRIVATE MEETINGS SUMMIT has acquired some secondary meaning. The disclaimer of the word SUMMIT is (probably – I didn’t go check the PTO) done with the explicit language of “apart from the mark as shown.”

    But the PRIVATEMEETINGSSUMIT.COM registration uses the SUMMIT term in exactly the manner “as shown” by the registration, and should be included in the trademark analysis for these purposes.

    The whole point of the 5 years on the Supplemental Register and the shift to the Principal Register on a showing (or presumption) of Secondary Meaning is *precisely* to grant a monopoly in what _was_ a descriptive phrase. The Examiner was probably wrong to break off the last word as somehow “more descriptive” and the Board was (I would argue) incorrect in breaking the SUMMIT word off of the mark as a whole.

    Actually, I think that what’s happened is that the Examiner made a mistake requiring the disclaimer — and he or she is not alone in this error. The Registrant couldn’t fairly claim any rights in PRIVATE apart from the mark as a whole or in MEETINGS apart from the mark as a whole or in PRIVATE MEETINGS apart from the mark as a whole or even in MEETINGS SUMMIT apart… etc. The Examiner (apparently) wanted to treat the SUMMIT as a more generic (bad word choice, I know) descriptor of the service offered, and tried to break it off with the disclaimer.

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