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Common Word Trademarks Owned by Major Brand Complainants: How Protectable?

Common word trademarks, PRICELESS for example, are no less common for being owned by a major brand complainant and no more protectable from others using identical or confusingly similar words in their ordinary senses than if they were owned by parties of no market stature. As a complainant’s choice descends the scale, the less protectable the trademark. It is not as though common words never ascend in strength. They can when selected as arbitrary signs. The distinctiveness of APPLE, ORANGE and BLACKBERRY (to take only fruit names) is not because the owners are recognized in the marketplace as sources of produce.

The point about commonness and weakness is made in a duo of decisions by the same Panel, Mastercard International Incorporated v. Wesley Wobles, D2011-2311 (WIPO March 8, 2012) () and Mastercard International Incorporated v. Education, Ersin Namli, D2011-2312 (WIPO March 8, 2012) (). Complainant claims PRICELESS is one of a family of trademarks. The Panel dismissed both complaints. The fact that Complainant in its MASTERCARD identity is internationally famous is irrelevant.

Whereas the adjectival phrase MASTERCARD is strong – more suggestive than descriptive – PRIVILEGE is weak. It is not made strong by association. Furthermore, Complainant’s certified services are in the financial sector. In its application to the USPTO, Mastercard describes its services as follows:

Financial services, namely, providing credit card, debit card [charge card and stored value smart card services, prepaid telephone calling card services, cash disbursement,] and transaction authorization and settlement services.

In a recently filed registered trademark, PRICELESS NEW YORK (not referred to in either of these cases) the Complainant describes its services as follows:

Promoting the goods and services of others by means of coupons, discounts, advertisements, rewards and incentives generated in connection with the use of credit and debit cards, electronic links to merchant and retailer web sites, and through promotional contests.

The Panel notes that implicit in Complainant’s claim are two assertions:

(1) that the PRICELESS family of marks is associated with some of the areas represented by third-party links on Respondent’s website, which, according to the Complaint, are “hotel reservations, restaurant coupons, and tours”; or (2) that the PRICELESS family of marks is broadly associated with virtually any promotion of goods and services on the Internet – by “merchant and retailer web sites.”

If it were so that Complainant’s trademark by its implicit range could prevent anyone from using “priceless,” then (in effect) it would take control of the word coupled or not with any product or service. Implicit in the argument is that no one else can employ “priceless.” The Panel was not persuaded:

Although hotel reservations, restaurant coupons, and tours may be among the millions of things that might be obtained through use of Complainant’s trademarked products and services, the Panel finds that the Complaint in this proceeding has not established that the PRICELESS family of marks is associated in the trademark sense with “hotel reservations, restaurant coupons, and tours.”

Mastercard in its new application for PRICELESS NEW YORK and Respondents in their domain names with other geographic locations are all using “priceless” either as a qualifier to describe the value of the location (New York is priceless) or goods and services in New York are “priceless”).  In this use no one has a monopoly on the qualifier standing alone.  Respondents do not violate any third-party rights.

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