Category Archives: Intent to use

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

Denying Safe Harbor to Domain Names that Resolve to a Criticism Website

Posted on September 27, 2012 by Gmlevine

var _gaq = _gaq || [];
_gaq.push(['_setAccount', 'UA-11310882-1']);
_gaq.push(['_trackPageview']);

(function() {
var ga = document.createElement(‘script’); ga.type = ‘text/javascript’; ga.async = true;
ga.src = (‘https:’ == document.location.protocol ? ‘https://ssl’ : ‘http://www’) + ‘.google-analytics.com/ga.js’;
var s = document.getElementsByTagName(‘script’)[0]; s.parentNode.insertBefore(ga, s);
})();

Question 2.4 of the WIPO Overview of WIPO Panel Views on Selected U.D.R.P. Questions asks, “Can a criticism site generate rights and legitimate interests?” The answer is Yes, but.  The “but” could depend on the Panel assigned to resolve the dispute; it could also depend upon whether the criticism was the ultimate intended purpose.  Unlike answers to other questions which record consensus views, 2.4 notes that there are two opposing Views.  This one of only two circumstances for which the WIPO … Read the rest

Posted in Abusive intent, Commentary / criticism, Cybersquatting, Free speech, Intent to use, Para. 4(a)(iii) of the Policy, Para. 4(b)(i) of the Policy, Para. 4(b)(iv) of the Policy, Para. 4(c)(iii) of the Policy, UDRP | 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

Application for Trademark Registration By Itself Does Not Qualify as a Right

Posted on August 20, 2010 by gmlevine

A certificate of registration satisfies the threshold requirement for maintaining a UDRP proceeding while a mere “intent to use” application to register a trademark or registration on the Supplemental Register does not. The consensus is that no “presumption [of validity] arises from a pending application to register a mark,” Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO October 17, 2001). This was particularly highlighted in Martha Stewart Living Omnimedia, Inc. v. Joe Perez, FA0904001259275 (Nat. Arb. Forum June 24, 2009) in which the USPTO initially rejected the trademark for registration on the Principal Register. The Respondent in that case may very well have learned about the Complainant’s plans from scanning the TESS database, but “Everyday Eating” is a … Read the rest

Posted in Application for trademark, Intent to use, Jurisprudence, Para. 4(a)(i) of the Policy, Proof, Secondary meaning, UDRP | Leave a comment