While it is true 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), it is equally true that merely alleging a common law trademark does not make it so. The burden increases inversely to the mark’s classification. The weaker the mark the greater the burden of proof. A sufficient body of precedent has built up to form the consensus noted in the WIPO Overview: “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” (Paragraph 1.7).
In NJRentAScooter, the Complainant alleged a trademark in its business name. Seemingly aware that it was not on firm ground, it argued that “[n]umerous other marks that involve more generic terms are regularly found to be distinct and protected by the NAF, WIPO, the USPTO and other authorities, including many involved in recent domain names disputes before the NAF such as UKHouseClearances, LumberLiquidators, DollarCarRental, NationalCarRental, Beirut, and Fbomb.” The Panel correctly “points out that neither the USPTO, nor many other national trademark registration authorities, will accept purely descriptive trademarks for registration without substantial pre-filing evidence of use of the trademark.”
The last named example of a generic epithet that passed muster as a common law trademark usefully illustrates what a complainant must do. The Complainant in FBomb Clothing c/o Joel Jordan v. Domainly.com, FA0902001245522 (Nat. Arb. Forum March 16, 2009) had inadvertently allowed its domain name to expire and was suing to recapture it. It offered substantial proof of its marketplace activities over a period of time, including “screenshots of its website resolving from the <fbomb.com> domain name as they appeared in 2002 and 2008. (These screenshots were provided by using the Way Back Machine from InternetArchive.org.).”
In contrast, the Complainant in NJRentAScooter offered an unsworn statement in support of the complaint, a screenshot, which “is not of the website homepage but … a drilldown page for ‘NJRENTASCOOTER’. The page clearly shows the trademark and some of the services offered. The Panel notes however that the page also contains a copyright notice, as follows: © COPYRIGHT 2009 NJRentAScooter, LLC.” Other than that, there “is no other evidence of a company by the name of NJRentAScooter, LLC” and apparently no evidence of any substantial interaction with the public for its alleged trademark to have acquired “secondary meaning.”