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Using Trademarks to Market Professional Services

Attorneys have tried using trademarks to market professional services, but the outcome applies to all professionals as the surgeon found out in Accuray Incorporated v. Sanjay Mongia / Nuero Network, FA1409001582340 (Nat. Arb. Forum November 3, 2014).  In this case Respondent argues that incorporating a trademark is not an abusive registration. It should qualify as a legitimate interest because “he is a “Cyberknife Associate Consultant” and makes bona fide use of Complainant’s equipment in carrying out operations.” Further,

he is not a direct customer or distributor of Complainant and therefore not entitled to use the CYBERKNIFE trademark, Respondent argues that Complainant has failed to understand and appreciate that he is a bona fide end user and is making no attempt to sell their or any other products on his website.

The assertion is not sufficient in itself, but it also fails because the website included competitive products: “[t]he fact that Respondent may use the CYBERKNIFE product in providing medical services do not give him any rights or interest in the mark. Notwithstanding his the position that he has adopted that the website is purely for educational purposes, it is used clearly in association with, and to promote his professional practice.”

The only use that justifies a bona fide offering of services and would qualify under paragraph 4(c)(i) would be where respondent is using the domain name to provide essential information about a company’s products. Two examples are domain names incorporating pharmaceutical trademarks, Pfizer Inc. v. Van Robichaux, D2003-0399 (WIPO July 16, 2003) for <lipitorinfo.com> that the attorney was intending to use for the “purpose of providing information to the public concerning legal rights and treatment options should it ultimately be learned that ‘lipitor’ causes injuries to the consumer.” More recently, a Panel denied another pharmaceutical complainant for <nuvaringsideeffects.com>, N.V. Organon and Schering Plough Corporation v. Fields Law Firm and Stephen Fields, FA0904001259266 (Nat. Arb. Forum June 16, 2009).

There is generally an understandable reason why one complaint is granted and another denied. Respondent prevails where it shows it is using the domain name nominatively; it needs to use the mark to describe its goods or services, uses no more of the mark than necessary, and does not falsely suggest sponsorship or endorsement by the mark owner. Cedars-Sinai Medical Center v. Initiative Legal Group, FA1207001455024 (Nat. Arb. Forum September 10, 2012) (<cedarssinaiunpaid wages.com>). Nominative use was not found in Am. Int’l Group, Inc. v. Speyer, FA 422815 (Nat. Arb. Forum April 7, 2005) (<aiglawsuit. com> and <aigfraud.com>); American International Group, Inc. v. Bruce Levin, FA 591254 (Nat. Arb. Forum December 21, 2005); and Ginn Real Estate Company LLC v. Hilton Wiener, FA0806001211342 (Nat. Arb. Forum August 20, 2008) (<ginnlawsuit.com>). Nominative use was found in Cedars-Sinai Medical Center and KBR, Inc. v. Jeffrey L. Raizner / Jeffrey Raizner, FA1110001413439 (Nat. Arb. Forum December 27, 2011) (<kbrlitigation.com>).

The surgeon Respondent in Accuray fails for the same reason the attorney Respondent failed in Ginn Real Estate Company, namely that when the record is examined as a whole Respondents are using the trademark for a mixed purpose that includes soliciting its professional services. The websites are “not [being used] solely as a criticism or ‘gripe’ site, but as a site to promote the Respondent’s commercial and financial interests. It is not really too fine a point to say that at least one of the purposes of the website has been to solicit work for the Respondent.”

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