Whether geographically near, as in San Diego Hydroponics & Organics v. Innovative Growing Solutions, Inc., D2009-1545 (March 3, 2010) (registered trademark), or far, as in Digital Alchemy, LLC. V. Digital Alchemy c/o Ramon Felciano, FA0911001295928 (Nat. Arb. Forum January 12, 2010)(unregistered trademark), the complainant cannot assume that the consuming public recognizes its descriptive trademark as the source of particular goods or services different from another’s use of the same terms. ICANN panelists no less than judges have insisted that the putative trademark holder demonstrate secondary meaning if it hopes either to establish jurisdiction or prove knowledge as a basis for bad faith registration.
Reference to Section 2 of the Lanham Act, as amended (15 U.S.C. §1052) is useful here to put the issue in context. The statute reads that “[n]o trademark by which the goods or the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it….” There are several exclusions, but for this discussion the two relevant provisos are Subsections 2(e) and 2(f). Under the former, a trademark can be rejected if it is “merely descriptive”, “primarily geographically descriptive of the applicant’s goods”, “primarily merely a surname,” or “comprises any matter that, as a whole, is functional.”
Subsection 2(f) takes this back if the applicant’s use of the trademark has become distinctive of its goods in commerce. The trademark becomes distinctive upon “proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made.” However, “it does not involve a determination that the Complainant’s mark, at the time of the Respondent’s registration of the disputed domain names, had acquired secondary meaning sufficient for the public to recognize it as a symbol distinguishing the Complainant’s goods and services from those of others,” San Diego.
Both U.S. courts and ICANN Panels insist that proof of secondary meaning “includes evidence as to (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,” San Diego, citing First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378, 1383 (9th Cir.1987). For trademarks registered under 2(f) the complainant must prove secondary meaning. In San Diego Hydroponics the majority granted jurisdiction, but denied the complaint; in Digital Alchemy, the Panel held that the Complainant failed to prove any common law rights to the descriptive term.