legal Proving Common Law Trademark Rights in a UDRP Complaint

[News]

UDRP Complainants often fail to adequately demonstrate common law trademark rights. Sometimes the Panelists catch this and refuse to transfer the disputed domain name. At other times, the Complainant gets away with it.

It is well established that in order to succeed in a UDRP Complaint, a Complainant must establish either registered or common law trademark rights, in a mark that is identical or confusingly similar to the disputed domain name.

Sometimes, a purported mark is so descriptive, that it would seem impossible to prove "acquired distinctiveness" or "secondary meaning", as was the case in RE HOTELS.COM, L.P., 2008-1429 (Serial No. 78/277,681), where the United States Court of Appeals for the Federal Circuit affirmed the United States Patent and Trademark Office Trademark Trial and Appeal Board’s decision that HOTELS.COM was merely descriptive. Despite evidence submitted by the trademark applicant, including sixty-four declarations and consumer survey evidence, the Court held that a secondary meaning was not established and that the common meaning of the term prevailed.

Full Article: http://domain-name-lawyer.blogspot.com/2015/01/proving-common-law-trademark-rights-in.html