Maybe we could get
@jberryhill to give us the exact rules if an existing trademark in a class covers the entire class or just the specific sub-descriptors (sub-classes?)?
There are some general factors, but there are not "exact rules". The belief that there are "exact rules" which cover all possible factual scenarios is one thing that tends to lead domainers astray.
But let's be clear what we are talking about here. A Swiss corporation, the Libra Association, was established some time ago, and recently filed this US trademark registration application:
http://tsdr.uspto.gov/#caseNumber=88485782&caseType=SERIAL_NO&searchType=statusSearch
The recited goods and services are extensive, and I'm not going to copy and paste them here. The nonsense about some other registration limited to tax services has utterly nothing to do with what is recited in this application.
All that said .. establishing TM rights on a global scale for what they are hoping to be a planet-wide digital currency is a monstrous undertaking.
Not really. It's done all of the time under the various treaties which allow a filing in one place to be treated as if it were filed on an earlier date established elsewhere.
That is why, if you look at the data in the US application linked above, you will find that the application claims the priority right of this earlier-filed application under "Foreign Information":
Priority Claimed:
Yes
Foreign Application Number:
20190018
Foreign Application Filing Date:
Jan. 16, 2019
Foreign Application/Registration Country:
TURKMENISTAN
Now, there are a number of reasons to do that. One of those reasons is that it is very hard to get current filing information from Turkmenistan. Another popular place to quietly file applications is Trinidad & Tobago. An application can be filed in places like that, nobody will know about them, and then months later used as a priority basis for a US filing, once one has put their other ducks in a row.
So, my first observation in all of this "Libra" nonsense is that 99% of what people have been discussing in terms of US trademark documents is pure horseshit.
But there is a much more important observation to be made here, because I know there are going to be people who, with scant knowledge of how disputes are actually decided, raise a number of illusory issues about the application status and other things which they believe to be "exact rules" that don't really exist.
Let's have a look at a common UDRP principle used to make decisions:
--------------------
https://www.wipo.int/amc/en/domains/search/overview3.0/#item38
3.8 Can bad faith be found where a domain name was registered before the complainant acquired trademark rights?
3.8.1 Domain names registered before a complainant accrues trademark rights
Subject to scenarios described in 3.8.2 below, where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent. (This would not however impact a panel’s assessment of a complainant’s standing under the first UDRP element.)
...
3.8.2 Domain names registered in anticipation of trademark rights
As an exception to the general proposition described above in 3.8.1, in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith.
Such scenarios include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trademark application.
---------------------
If you go to the link, you'll find that the WIPO Overview also includes links to relevant decisions that will give you some sort of idea of the cases in which this principle has been applied.
So, and this is really the point:
QUIT OBSESSING OVER TRADEMARK DOCUMENTS AND TAKE A LOOK AT THE BROADER OBVIOUS REALITY HERE.
The reality of the situation is this. In June (or whenever) of 2019, Facebook announced they were going to explore the launch of a cryptocurrency product in some sort of affiliation with a Swiss company that was set up for this purpose. Before making that announcement, they bought some tangentially related IP assets, and filed a foreign priority registration application in Turkmenistan, to attempt to cover the waterfront and secure a position in the future to be the exclusive licensor of "LIBRA" for any purpose connected with the product they intend to launch.
They didn't prepare that legal foundation for squirts and laughs.
Now, the way this is going to shake out, is as follows:
1. Some dumb schmuck, in June (or July) of 2019, registers the following domain names:
LibraCoinage.tld
LibraCoinExchange.tld
LibraCrypto.tld
2. Fast forward to 2021. The LIBRA product has been launched and become popular. The Libra Association files a UDRP against the dumb schmuck who registered those domain names back in 2019.
3. The dumb schmuck files his "defense" claiming, "Oh, 'libra' has been a common word and a horoscope sign for a long time. I registered these domain names as social media sites for people born under the sign of Libra to share information about their coin collections" or some stupid shit like that.
The dumb schmuck also says, "They didn't have a registered trademark when I registered the domain names and the product didn't even exist at that time" and, my personal favorite, "I wasn't using the domain names for any infringing purpose, I just offered them for sale."
----
Okay, so, given those facts, there is no question what the outcome is going to be:
Nobody is stupid enough to believe that the dumb schmuck registered those domain names right in the midst of all of the media attention simply because it was a coincidence of timing.
Nobody is stupid enough to believe that the dumb schmuck didn't register that list of those names for any reason other than they are directly relevant to the product that Facebook announced its intention to launch.
Nobody is going to give a shit what the technical status of some trademark application was, or what is the specific recitation of goods and services in the application (by 2021 a registration).
And nobody is going to believe the dumb schmuck or care about the dumb schmuck's lame arguments, because the obvious reality of the situation is that the dumb schmuck heard that Facebook was going to be launching a product named "Libra" and the dumb schmuck thought he could secure a position wholly based on goodwill attributed to the brand name of that financial product.
Now, do remarkable coincidences happen sometimes? Yes they do.
Is there room in the world for legitimate nominative use of trademarks? Yes there is.
But unusual circumstances require strong and persuasive evidence. Registering a roster of names clearly timed with major media attention to a forthcoming product brand, with lame-brained justifications for having done so, does not do that.
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