Showing Common-Law Trademark Rights in a UDRP

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January 12, 2015

By slevy

gemsAs anyone who regularly reads this blog knows, the UDRP is only designed to be used by a complainant who owns the rights to a trademark that has been infringed upon by a domain name. Typically, trademark rights are proven in UDRP complaints by showing the copy of a registration certificate in some country. Merely having a pending trademark application is not enough.

However, it may be possible to meet this proof by showing evidence of common-law trademark rights, which arise from actual use rather than from a formal registration.

Case Study

In a recent case involving the domain yourgemmologist.com, the complainant did just that.  It claimed common-law trademark rights by virtue of having used the term YOURGEMOLOGIST since the year 2000 in relation to providing educational information in the academic field of gemology.  The decision doesn’t mention what evidence was submitted, but the Panel states “that Complainant’s evidence of common law rights is sufficient” to meet the UDRP standards.

It’s also important to note that the Complainant filed a trademark application with the USPTO in March of 2014.  The USPTO initially rejected this application claiming both that the mark is “merely descriptive” of the Complainant’s services, and also that it is confusingly similar to an earlier registration for the mark MYGEMOLOGIST, used for “providing information regarding gems via the internet.”

On December 29, 2014, about six weeks after the present UDRP complaint was filed, the Complainant submitted its reply to the USPTO claiming that the YOURGEMOLOGIST mark has acquired distinctive status under section 2(f) of the Trademark Act by virtue of its longstanding use and that there is no likelihood of confusion with the MYGEMOLOGIST mark based on differences between the services provided by each company.  No mention was made of differences between the marks themselves.

So here’s where things get interesting.  The Panelist in the yourgemmologist.com case made no mention of the USPTO’s refusal of the application, nor the basis for such refusal. This raises the question of whether the Complainant volunteered that information or whether it should be the duty of a UDRP Panel to investigate such matters on its own (likely not, given the limited scope of the Policy).

Regardless, I do feel that a more detailed discussion concerning the distinctiveness of Complainant’s mark was warranted here to support the Panel’s finding of trademark rights.  When a UDRP complainant’s mark is borderline descriptive (and especially where it’s been rejected by a trademark office as such), it’s either premature to declare that trademark rights exist or, if not, necessary to support such a finding with a more in-depth description of the evidence.

At this point the USPTO Examining Attorney will consider the Complainant’s response to the office action and its submitted proof of acquired distinctiveness.  If it finds that the Complainant has fallen short in this regard, then we will have the awkward situation where a UDRP Panel found the existence of trademark rights but a trademark office (arguably a higher authority on such matters) will have found that no such rights exist.

Of course, there’s also the possibility, however remote, that should the PTO continue its refusal of the Complainant’s mark based on the MYGEMOLOGIST registration we could see the even more awkward situation where the owner of this other mark might get involved and claim that the yourgemmologist.com domain infringes on its own trademark rights. This would be like a big seagull grabbing a morsel of food away from a smaller seagull who, just moments earlier, had grabbed that same morsel from an even smaller bird.

In any event, this decision highlights the fact that the UDRP is a tool with a rather limited focus.  As such, it may sometimes be appropriate to either deny a case without prejudice to its being re-filed in the future or to at least support a transfer order with a full discussion of the relevant evidence.

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