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Trademark on the Supplemental Register (By Itself) Does Not Satisfy Jurisdiction Requirement

A trademark registered on the Supplemental Register is not one in which a complainant has a right. The complainant’s fate is to have its complaint denied. Jahnke & Sons Construction, Inc. v. Trachte Building Systems, Inc., FA0910001292233 (Nat. Arb. Forum December). Its position is no better than having no registration at all. Although there are instances in which a generic or descriptive trademark (not necessarily on a “Supplemental Register”) denied jurisdiction years earlier has matured over time to acquire distinctiveness such as Easygroup IP Licensing Limited v. N. Hilton, Easycentre.com, D2005-0935 (WIPO October 31, 2005) (<easycentre.com>). The Panel held that a trademark in a generic term or common word that achieves an International reputation “puts the Complainant’s claims on quite a different footing” Cases brought by Easygroup in the first year of the UDRP were denied as it was in Jahnke.

Registration on the Supplemental Register signifies that the mark is incapable of crossing the threshold of distinctiveness accorded to marks enrolled on the Principle Register. It “provides the Complainant with no protectable rights” in the alleged mark, CyberTrader, Inc. v. Bushell, D2001-1019 (WIPO Octobrt 30, 2001). Indeed, it is “evidence that there are no common law rights at the time of application,” Roberta Chiapetta dba Discount Hydroponics v. C.J. Morales, D2002-1103 (WIPO January 20, 2003).

The Complainant in Jahnke alleged that it purchased the domain name <trainingtowers.com> in 1997, commenced a commercial website on August 29, 2000 and traded under the name TRAININGTOWERS.COM since 2001. It applied for a trademark in 2008. The Respondent registered <trainingtower.com> in 2004. Whether as “training towers” or “training tower” the combination “merely describe[s] a characteristic of the Complainant’s services in respect of ‘training towers’.” The Examining Attorney noted in the Office Action that

[r]egistration is refused because the applied-for mark merely describes a characteristic and/or feature of applicant’s services, in that applicant designs, develops and constructs fire rescue facilities in the nature of ‘training towers’.

Applicants for registration of a mark on the Principal Register have a choice in these situations: they “may respond to the refusal(s) by submitting evidence and arguments in support of registration.” However, instead of further pursuing registration on the Principal Register the Complainant in Jahnke accepted the verdict and elected a registration for the trademark on the Supplemental Register which it received in 2009. This does not foreclose a complainant from proving that it has a common law trademark, but “a party seeking to establish exclusive rights carries a heavy burden of proof for removing the term from the public domain,” Lodging Kit Company Inc. v. Natalie Soffer, FA0909001283398 (Nat. Arb. Forum November 5, 2009).

Paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions notes that the “complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.” However, in Jahnke, the “evidence produced by the Complaint does not come within this prescription. For example, only 78 advertisements were shown over nine years.”

Gerald M. Levine, <udrpcommentaries.com>

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