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Establishing Secondary Meaning for Unregistered Marks

Paragraph 4(a)(i) of the Policy requires a complainant to demonstrate that it has a trademark. If registered, the requirement is easy of proof, and although an unregistered trademark is no less entitled to protection, 15 U.S.C. §1125 (Section 43 of the Lanham Act), distinctiveness is not presumed; protection must be earned. It has been noted that “Panelists with WIPO and NAF have sometimes approached the issue of proof of trademark ‘rights’ … in a slightly more relaxed manner than does the USPTO when it requires proof of secondary meaning,” NJRentAScooter v. AM Business Solutions LLC, FA0909001284557 (Nat. Arb. Forum November 4, 2009). However, secondary meaning has to be established in both instances.

If panelists are more relaxed – a complainant’s should not be in their proffer of evidence – it is because for the UDRP the issue is standing to maintain the proceeding; is not conclusive of any right to the domain name; whereas for the USPTO the issue is more fateful; it is a matter of which Register. A domain name composed of generic or descriptive elements may pass the 4(a)(i) test, but not be eligible for the Principal Register. In the case of NJRENT A SCOOTER the mark was simply too descriptive. In St Andrews Links Ltd v. Refresh Design, D2009-0601 (WIPO June 22, 2009) THE OLD COURSE identifies the source of the Complainant’s services; had standing; and the Respondent forfeited <theoldcourse.com>. In other instances, the mark has passed the USPTO test but its very descriptiveness supports the respondent’s defense that it has a right or legitimate interest in the domain name, Discount Embroidery Supply v. AllStitch LLC, FA1007001336136 (Nat. Arb. Forum September 6, 2010) (<discountembroiderysupplies.com>).

The standard of proof is summarized in Camco Manufacturing, Inc. v. CheapYellowPages.com and Brian Wick, FA1102001370745 (Nat. Arb. Forum March 18, 2011). “To support a finding of secondary meaning, a panel may consider factors such as the length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. These factors are considered in conjunction with all of the evidence and the nature of the claimed mark (i.e. whether it may be generic or descriptive).” A similar conclusion was reached in Wickless Scentsations, Inc. v. TimG Niche Marketing / Timothy Gorman, FA1012001365753 (Nat. Arb. Forum March 15, 2011), citing cases from U.S. federal courts and an early UDRP decision that succinctly states what the complainant must offer to satisfy its burden, British Heart Foundation .v. Harold A Meyer III, AF0957 (eResolution November 13, 2001):

To succeed in a Complaint under the Policy in relation to an unregistered mark, it is necessary for the Complainant to prove that the mark is in fact a trademark. Thus, the Complainant must produce evidence proving that, prior to the filing of the Complaint, it has provided goods or services under the unregistered mark and had thereby acquired a reputation such that members of the public would associate those goods or services with the Complainant and not with others not authorized by the Complainant to use the mark. That is to say, the Complainant must prove that, prior to filing the Complaint, it had acquired a right in the unregistered mark such as would enable it to bring a legal action against a third person using the mark without its consent.

Even disclosure of first use in commerce on a trademark application (which is merely an unverified statement) is not probative of secondary meaning. The principle of relation back only applies to the date of application; not to first use in commerce. For standing in a UDRP proceeding, the complainant must prove (not simply allege) the earlier date “in commerce.” Xoft Inc. v. Name Administration Inc. (BVI), FA1154179 (Nat. Arb. Forum April 25, 2008): “the date of registration does not relate back to the date that the application was filed unless there is clear evidence of use in commerce sufficient to create a secondary meaning in the mark.” This leads to the anomaly that although a declaration of continuous use of a descriptive mark for at least five years prior to the application may be sufficient for trademark registration it is not necessarily adequate to prevail under the UDRP, Discount Embroidery Supply, supra.

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