Category Archives: Application for trademark

Registering Trademark With Knowledge that Corresponding Domain Name is Taken

Posted on January 3, 2013 by Gmlevine

There is not an available, corresponding domain name for every trademark so it would seem prudential for a party before it becomes invested in what it regards as a desirable moniker to research the Whois database before filing its trademark application. The domain name should be purchased before application to avoid the frustration of learning thereafter that it has legitimately been registered by someone else.

The issue is illustrated in three cases from 2009 and 2010. In Success Bank v. ZootGraphics c/o Ira Zoot, FA0904001259918 (Nat. Arb. Forum June 29, 2009) the Complainant argued that it had a superior right to because it owned the trademark and because “ZootGraphics does not own any state or federal trademarks including the … Read the rest

Posted in Abusive intent, Application for trademark, Later acquired trademark rights, Para. 4(a)(iii) of the Policy, Para. 4(c)(i) of the Policy, Paragraph 4(b) of the Policy, Paragraph 4(c) of the Policy, Policing trademark, Protecting IP, Registrion and renewal, Renewal / Re-registration, Targeting / Not targeting | Tagged , , , | Leave a comment

No Standing for “Intent to Use” Applications

Posted on December 4, 2012 by Gmlevine

While trademark registration on the Principal Register is prima facie proof of validity and some consideration is given to registrations on the Supplemental Register on proof of acquired distinctiveness, no right accrues to a pending trademark application. The “broad consensus under the Policy is that a trademark application alone is not sufficient to establish rights in a mark.” PRGRS, Inc. v. Pak, D2002-0077 (WIPO April 24, 2002). A certificate of registration satisfies the threshold requirement while a mere application to register a trademark confers no rights. “No such presumption arises from a pending application to register a mark.” Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO October 17, 2001). Application “for a mark [as opposed to issuance of … Read the rest

Posted in Application for trademark, Burden of proof, Intent to use, Para. 4(a)(i) of the Policy, Reputation in the marketplace, Standing, Targeting / Not targeting, UDRP Rule 10(d) (evidence), UDRP Rule 3(c) | Tagged | Leave a comment

Timing and Acquisition of Rights for "Intent to Use" Trademark Applications

Posted on May 5, 2011 by gmlevine

Holders of trademarks composed of common words not infrequently flatter themselves as to their symbols’ distinction and market reach. It is not a per se violation of the Policy for a domain name to be identical or confusingly similar to a trademark. The violation has to be demonstrated. The key factors are timing of the registrations, geographic distance or propinquity of the parties and the respondent’s demonstrable knowledge of the complainant. Expressions familiar to a trade can be registered but not monopolized. The Complainant in Retail Royalty Company, and AEO Management Co. v. Modern Empire Internet Ltd., FA1103001378458 (Nat. Arb. Forum April 21, 2011) owns the mark 77 and claims to have been selling clothing under that mark for … Read the rest

Posted in Application for trademark, First to register, Intent to use, Later acquired trademark rights, Para. 4(a)(iii) of the Policy, Similar - Not confusing, Targeting / Not targeting, Timing of registration, Trademark in mind | Leave a comment

Proving Trademark Acquisition

Posted on October 22, 2010 by gmlevine

“Pay-per-click websites” (noted the Panel in Business Filings Incorporated v. John Thalacker D/B/A Traffico, D2010-1332 (WIPO October 1, 2010)) “are often found not to be bona fide offerings of goods or services, but this is not always the case.” It continued that the “issue turns primarily on the content of Respondent’s website at a particular point in time and whether Respondent’s use of the Domain Name was infringing or impairing Complainant’s trademark rights at a given time.” So, for example, if a domain name registered prior to complainant’s acquisition of its trademark  dabbles in different goods or services the respondent’s interest is likely to be legitimate. If the timing is prior but the content appears to take advantage of … Read the rest

Posted in Application for trademark, Common law protection, Intent to use, Lanham Act, Para. 4(a)(ii) of the Policy, Timing of registration, UDRP | Leave a comment

Inactivity of a Domain Name Registered Many Years Prior to Accrual of Trademark Is Not Grounds for Finding Registration in Bad Faith

Posted on September 21, 2010 by gmlevine

It is undoubtedly true that a respondent who holds inactive for many years a domain name identical to a trademark and is unresponsive to a Rule 12 Procedural Order to dislcose its use will fall short of rebutting a complainant’s allegation that it lacks rights or legitimate interests in the disputed domain name. However, a complainant does not prevail on proving 2/3rds of the Policy requirements. It also has to prove that the domain name was registered in bad faith. While there are factual circumstances under which a passively held domain name can support a finding of bad faith registration, it is not for a dictionary word. The analysis of passive use is traceable to Telstra Corporation Limited v. Nuclear … Read the rest

Posted in Application for trademark, Jurisprudence, Knowledge, Timing of registration, UDRP | Leave a comment