Category Archives: Standing

Registrability of Words Standing Alone in Design Trademarks

Posted on February 15, 2013 by Gmlevine

Design trademarks combine figurative element(s) with word(s). The words may or may not be registrable standing alone. That they are or are not registrable is critical to determining confusing similarity. Non registrable terms are non-actionable because they fall into a category that cannot take on trademark status. The outcome of words disclaimed is more obvious; they cannot be used as a basis for infringement. The term “Minibar Systems” for example in Minibar North America Inc. v. Ian Musk & GEMS Global Electronic Minibar Systems AS, D2005-0035 (WIPO March 2, 2005) cannot be resuscitated as being a suggestive phrase when it is “merely” or “purely” descriptive.

Such words cannot be read as the mark, but an integral feature of it.  … Read the rest

Posted in Abusive intent, Generic/Descriptive terms, IP-Trademark, Para. 4(a)(i) of the Policy, Standing, Targeting / Not targeting, Trade names | Tagged , , , | Leave a comment

Allegations Alone are not Proof of a Trademark Right; Subsidiary Must Prove Consent

Posted on February 8, 2013 by Gmlevine

Although timing of a trademark registration is not a factor for standing it is critical in assessing bad faith. Unless complainant is able to persuasively demonstrate that its commercial persona preceded registration of the domain name the complaint must be dismissed since no amount of post-registration reputation can overcome evidence that the trademark was nonexistent at the earlier time. A variation on this principle is claimed authority by a subsidiary or division of a the trademark owner whose evidence falls short of demonstrating the relationship. The Complainant in Old Republic Home Protection Co., Inc. v. Direct Privacy ID 7F9AB, D2012-2366 (WIPO January 11, 2013) alleges a corporate relationship with the trademark owner. But the allegation is insufficient without proof.  … Read the rest

Posted in Authorized use, Para. 4(a)(i) of the Policy, Permissive use, Proof, Standing, UDRP, UDRP Rule 10(d) (evidence) | Tagged , , , , | Leave a comment

Invoking UDRP’s Mutual Jurisdiction Under Paragraph 4(k) and Rule 18(a)

Posted on December 10, 2012 by Gmlevine

Registrants in acquiring domain names and trademark owners in complaining of abusive registration are both required to submit to the jurisdiction of stipulated courts with regard to the adjudication of disputes. The requirement in the registration agreement is traceable to ICANN’s Registration Accreditation Agreement with the registration. Paragraph 3.7.7.10 reads: “For the adjudication of disputes concerning or arising from use of the Registered Name, the Registered Name Holder shall submit, without prejudice to other potentially applicable jurisdictions, to the jurisdiction of the courts (1) of the Registered Name Holder’s domicile and (2) where Registrar is located.” The requirement that binds the complaining trademark owner to the same jurisdictions is found in the UDRP at 3(b)(xiii) and Rule 1 of the … Read the rest

Posted in Common law protection, Fraudulent transfer, Mutual jurisdiction, Standing, Suspension / termination, Transfer of domain name, UDRP Rule 1 (Mutual jurisdiction), UDRP Rule 18(a) | 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

Anticybersquatting Consumer Protection Act’s In Rem Jurisdiction

Posted on July 2, 2012 by Gmlevine

An owner of a trademark registered in any jurisdiction or whose unregistered right is recognized under any national law satisfies the threshold requirements for standing in a UDRP proceeding. The UDRP and Rules provide for a simplified procedure for obtaining personal jurisdiction, but whether the registrant/respondent answers the complaint or not the Panel is authorized to determine the rights to the disputed domain name. Because the procedure for obtaining personal jurisdiction in federal court is not simple the Anticybersquatting Consumer Protection Act (ACPA) grants both subject matter jurisdiction where in personam jurisdiction can be obtained as well as in rem jurisdiction where it cannot. 15 U.S.C. §1125(d)(2)(A) provides that “[t]he owner of a mark may file an in rem civil … Read the rest

Posted in Anticybersquatting Consumer Protection Act, Standing | Tagged , | Leave a comment