question Registering Trademark Domains - The Critical When Question

[Charac]

Dipping into the ACPA -- per registering trademark names that are the same as, or close to new domain names:

Understanding that name marks, must be distinct or famous for this to apply...

- Is "distinct" considered the day forward of a USPTO registration date ? Or must the process be given time to accrue?
- Still yet, can this all be retroactive to date of first use on application. If and when a intended registration does occur?

Since the process can realistically take 12 to 15 months, and since about half of all TM applications are denied and may not end up gaining a TM after all. Nobdoy actually knows until the date arrives.

Then again, according to these folks: https://content.next.westlaw.com/Gl...ansitionType=Default&contextData=(sc.Default)

The ACPA applies to trademarks "whether registered or unregistered." Could they be referring to an oddball situation?

 

[jberryhill]

Once you grasp that having a trademark has nothing to do with the USPTO, a light is going to go on and you’ll realize why a lot of your questions on namepros don’t make sense.

The ACPA applies to trademarks "whether registered or unregistered." Could they be referring to an oddball situation?

No, they are not referring to an oddball situation. The problem is that you don’t understand that having a trademark in the US has nothing to do with whether the owner chooses to register that trademark.

I’ll just copy and paste this from one of about a dozen prior posts here, but the moment you understand this, your thinking is going to shift:

“In the US and many other countries, one does not 'get' a trademark by filing an application with a government office. The way you get a trademark in the United States is by using a mark for goods or services such that the mark is capable of distinguishing your goods and services from others in the relevant market.”

Registering a mark provides several benefits, but you can have a perfectly enforceable trademark without ever filing an application with the USPTO.

A trademark become distinct as soon as it is recognized by consumers as an indicator which allows them to differentiate between competing goods in the marketplace for those goods. It has absolutely nothing to do with anything that happens at the USPTO.

 

[Charac]

Once you grasp that having a trademark has nothing to do with the USPTO, a light is going to go on and you’ll realize why a lot of your questions on namepros don’t make sense.

Maybe it's not so much that my questions don't make sense as you don't get my perspective?

You seem to be choosing to concentrate on the most basic definition of a trademark. Even USPTO website has words to this effect, I'm already aware. I've had a registered mark even if it was gotten over 20 years back. Rusty, I'll admit.

But when we are talking about protection of marks, national, in the most practical sense, are we not normally alluding or referring to a national repository that holds a searchable record used to discover such marks -- USPTO?

Otherwise, how are domain registrants (not seeking a USPTO mark) to discover possibilities of potential infringement to steer clear from? What? Where? Why? Google serps don't always provide most popular results.

So, rephrasing my question, with respect to terms of "distinctive" or "famous. " How does one publicly determine the when; the point at which this sufficiently materializes? Especially for an entirely new product or service entering the mainstream.

 

[jberryhill]

Maybe it's not so much that my questions don't make sense as you don't get my perspective?

Having worked in intellectual property since 1992, you'd be surprised how many perspectives I "get", since part of what I've been doing for the last 30-odd years is helping people to understand that a lot of this stuff is not based on mechanical rules, because there are some fuzzy subjective issues that come up. While the law is pretty clear, the facts come in all shapes and sizes.

And so, here's the thing, I'm pretty sure that I first went to work for a Philadelphia IP law firm in 1992 a while after completing a doctorate in electrical engineering and working on some consulting projects. The idea was that I would primarily patent work, which I still do, but my focus, and eventually my own practice, gravitated toward internet-related legal issues.

At least I'm pretty sure it was 1992. But, you tell me, where would you, I, or anyone else go, in order to find out when exactly I started working for that law firm?

The answer is, there isn't any such place to find that information, and that's the way it is with a lot of common law trademarks - especially if they've been around a while.

Now, you take something like the iPhone. Anyone here can find out when Apple first started promoting and selling a product called "iPhone" since, typically, people who sell things try to, you know, attract interest in their new products and services. So, when I'm trying to figure out when a trademark may have been first used, I use things like news databases, press releases, Archive.org, the TM owner's own domain and corporate registration information, and so on.

But, sometimes, like "when did John Berryhill first start working in IP law", you aren't going to find an answer, since I don't even know. I have a feeling it was sometime in April or May, since there was a contract project I had to finish up before starting that new job.

If that's not clear to you, then let's try an example.

Fred Frites runs a diner in Anytown, Oklahoma. He's been running it since 1988. Sometime in the late 90's, trying to attract business, he comes up with a sandwich he calls the "Fredburger". He runs it as a weekly special on Tuesday nights. People like it. They come in on Tuesday nights, and each week the crowd gets bigger as word spreads through Anytown that there's a really special sandwich over at his diner called the "Fredburger" and it is only available on Tuesday nights.

At that point, Fred has a common law trademark. The geographic extent of his trademark is pretty much limited to Anytown and the surrounding area - maybe he's well known throughout the county. At this point in time, if someone with a restaurant at the other end of town puts up a sign saying "Come in for our Fredburger", it is very likely that Fred can go to state court and get an injunction against that other restaurant using "Fredburger".

However, also at this point, if some other guy named Fred starts selling a completely different "Fredburger" in Noplace, New Mexico, there isn't anything that Fred can do about it, and it is unlikely that the two Freds even know about each other. I'll come back to the New Mexican Fred later.

Word of his wonderful burger spreads, and by 1995, Fred is thinking about opening up other locations in his area. He starts another restaurant in a town not far away across the state line in Nosepick, Texas. He also decides to call the restaurant "Fredburger" after his signature menu item. It's a hit. But, by the time Fred opens his third restaurant in 2005, he's overwhelmed and can't run three restaurants on his own.

So, Fred decides to enter into franchising agreements to have independent owners open their own "Fredburger" restaurants and run them according to the rules in the franchise agreement.

After he's signed on about ten franchisees, his lawyer says, "You know, you want to be able to efficiently sue in federal court for monetary damages, instead of using state courts and having to prove your trademark rights every time. Maybe you should think about registering your 'Fredburger' mark, so that you have a tool to make sure your franchisees don't use your mark for other stuff."

It's at that point that Fred calls me. He gives me the whole story and I start preparing his trademark registration application. Now, one of the things that is required for a US trademark application is an allegation of "first use". Because the trademark registration system is based on the commerce power in the Constitution, a jurisdictional requirement is to allege a date when the mark was first used in interstate commerce in the US. Now, I'm not chasing down a long legal rabbit hole to unpack that here, because it alone is a deep subject. But, as a practical matter, I want know:

"When did you first use 'Fredburger' for a burger menu item?"

I guarantee you, nine times out of ten, Fred himself doesn't know the answer to that question. "Oh, it was back in the late 1990's, I can't remember what year. I think maybe it was the same year my Aunt Betsy got married, because they had wanted me to cater the reception and serve Fredburgers at it."

At that point, Fred will tell me that he'll go see if he can dig out Aunt Betsy's wedding invitation, in order to figure out when he first started using 'Fredburger' as a mark for burgers, and I'll have to tell him that's not really necessary, because we're only looking for an 'at least as early as' date. So, if he can pin down some date when he knows he was making Fredburgers, then that's going to be helpful.

Then, my next question is going to be:

"When do you first use 'Fredburger' as the name of a restaurant?"

Notice, that the mark is for two things. It is a mark for burgers with a first use date around the time of Aunt Betsy's wedding, and it is ALSO a mark for restaurants, with a different and later first use date.

This leads me to the other point worth making, since we are now talking about "when did a trademark become distinctive" which is really kind of a circular question, as phrased, since a trademark IS distinctive by definition. The real question is "when did it first function as a trademark."

Returning to the ACPA language, and if we are simply looking at "registration" instead of "use" or "trafficking", it's pretty much common sense that in order to register a domain name with a bad faith intent to profit from a mark, that the mark had to exist at the time the alleged cybersquatter registered the domain name - since otherwise, there would be nothing against which to exercise the "bad faith intent".

That said, the puzzling aspect of your question of "how do I find out when a mark became distinctive" is, I assume, being asked on Namepros - a domain name forum - out of a concern to avoid liability for cybersquatting.

I mean, what problem are you trying to solve? Presumably, anyone who registers a domain name knows why they did it. So, if they registered the domain name because they had heard of a mark being used by someone else, I think they are going to know that. But if they had some other reason for registering the domain name, then they are going to know what that reason is too.

Sure, as a practical matter, one can certainly run into credibility problems about whether or not a judge is going to believe your "non-trademark reason" for having registered the domain name. But having a judge or jury not believe your story of innocence is not something new, unusual, or specific to the law concerning domain names.

Maybe I'll come back to "what about that other guy in New Mexico" question, later, but my coffee is ready, so let me make sure I answer your specific question:

How does one publicly determine the when; the point at which this sufficiently materializes? Especially for an entirely new product or service entering the mainstream.

In my example, the answer would "ask Fred". Maybe there was a newspaper article about it at the time. Maybe someone can find advertisements that Fred made at the time.

But, sometimes - and having defended hundreds of these cases, you better believe I spend a lot of time researching this question in particular when I defend a case - you aren't going to be able to know the answer to that question with the sort of precision you think should be available to you.

Sometimes, you have to go to great lengths to figure out what an answer might be. In a recent case I defended, the domain name was Pitstop.com. The Complainant is a Brazilian auto parts chain who claimed to have been using the mark "PITSTOP" for retail auto parts in Brazil since 1922.

Now, think about that for a minute. Brazil in 1922 was not the most developed country in the world, and "pitstop" is an English term derived from the sport of auto racing. How long do you think people were racing automobiles in Brazil, and when did "pitstop" even become a word used in auto racing?

So, in answer to your question of "Where do I find out when a mark became distinctive" here's what I had to figure out in order to investigate their claim of having used "PITSTOP" as a mark since 1922:

Think about that for a minute.

Taking your question of "How do you know when a mark was first used?" and applying it to the pitstop. com UDRP proceeding, I had to look into (a) the history of the word, (b) the history of the Brazilian auto industry, (c) the history of auto racing in Brazil, (d) the history of the Complainant in particular, (e) relevant trademark filings in Brazil, (f) relevant corporate registration records in Brazil, and, of course, (g) whatever I might be able to find through relevant domain name regsistrations, archive.org, and so on.

That's just one answer to your question of "How do you find out when a mark was first used?" as applied to that specific set of circumstances.

But I do believe I get your perspective. There are a lot of things that seem like they should be simple to someone new to the subject, but which really aren't as simple as they may believe. Take skiing, for example. All you have to do is stand up on some long planks and slide down snow on a mountain. How hard can it be?

The UDRP decision, if anyone is still reading at this point, is here:

https://www.wipo.int/amc/en/domains/decisions/pdf/2023/d2023-5318.pdf

"The Respondent makes a compelling case for not being aware of the Complainant and its trademark at the
time of registration of the disputed domain name. The Complainant does not advance a single reason to
believe that the Respondent, based in the United States, at the time of registering the disputed domain name
in July 1994, should have known of the Complainant or, for that matter, should have known that PIT STOP
was used for an auto parts business in Brazil. The Panel also notes that none of the Complainant’s
trademark registrations predates the registration of the disputed domain name (although at least one of the
registrations was merely a pending application at that time). Therefore, the Panel finds that the disputed
domain name was not registered in bad faith."

The question of "When did they first have a mark?" was never actually answered.

However, the more important question of "Is it likely the domain registrant aware of the mark when he registered the domain name?" WAS answered.

That second question is much more important than the first one.

 

[jberryhill]

Still yet, can this all be retroactive to date of first use on application. If and when a intended registration does occur?

No.

The "date of first use" in a US trademark application is a mere allegation. It is not itself evidence that the mark was in use or distinctive as of that date.

Not even the USPTO accepts the "date of first use" as a proven fact in disputes within the USPTO when two applicants get into a contest of who was actually first.

This is from the USPTO Trademark Manual of Examining Procedure, Section 903.06:

https://tmep.uspto.gov/RDMS/TMEP/current

"In an inter partes proceeding, a date of use must be established by appropriate evidence. A date of use set forth in an application or registration owned by applicant or registrant is not evidence on behalf of that applicant or registrant. 37 C.F.R. §2.122(b)(2); Trademark Trial and Appeal Board Manual of Procedure (TBMP) §704.04."

The date of first use in a trademark application is simply a jurisdictional allegation. It is not a proven fact.

Can it be a starting point for research? Sure.

But I have seen situations in which trademark applicants have actually falsely backdated their "first use" date in order to obtain a trademark registration which they then used as the basis for going after the domain name - in the mistaken belief that the first use date would be taken as true.

 

[Synozeer]

Having worked in intellectual property since 1992, you'd be surprised how many perspectives I "get", since part of what I've been doing for the last 30-odd years is helping people to understand that a lot of this stuff is not based on mechanical rules, because there are some fuzzy subjective issues that come up. While the law is pretty clear, the facts come in all shapes and sizes.

And so, here's the thing, I'm pretty sure that I first went to work for a Philadelphia IP law firm in 1992 a while after completing a doctorate in electrical engineering and working on some consulting projects. The idea was that I would primarily patent work, which I still do, but my focus, and eventually my own practice, gravitated toward internet-related legal issues.

At least I'm pretty sure it was 1992. But, you tell me, where would you, I, or anyone else go, in order to find out when exactly I started working for that law firm?

The answer is, there isn't any such place to find that information, and that's the way it is with a lot of common law trademarks - especially if they've been around a while.

Now, you take something like the iPhone. Anyone here can find out when Apple first started promoting and selling a product called "iPhone" since, typically, people who sell things try to, you know, attract interest in their new products and services. So, when I'm trying to figure out when a trademark may have been first used, I use things like news databases, press releases, Archive.org, the TM owner's own domain and corporate registration information, and so on.

But, sometimes, like "when did John Berryhill first start working in IP law", you aren't going to find an answer, since I don't even know. I have a feeling it was sometime in April or May, since there was a contract project I had to finish up before starting that new job.

If that's not clear to you, then let's try an example.

Fred Frites runs a diner in Anytown, Oklahoma. He's been running it since 1988. Sometime in the late 90's, trying to attract business, he comes up with a sandwich he calls the "Fredburger". He runs it as a weekly special on Tuesday nights. People like it. They come in on Tuesday nights, and each week the crowd gets bigger as word spreads through Anytown that there's a really special sandwich over at his diner called the "Fredburger" and it is only available on Tuesday nights.

At that point, Fred has a common law trademark. The geographic extent of his trademark is pretty much limited to Anytown and the surrounding area - maybe he's well known throughout the county. At this point in time, if someone with a restaurant at the other end of town puts up a sign saying "Come in for our Fredburger", it is very likely that Fred can go to state court and get an injunction against that other restaurant using "Fredburger".

However, also at this point, if some other guy named Fred starts selling a completely different "Fredburger" in Noplace, New Mexico, there isn't anything that Fred can do about it, and it is unlikely that the two Freds even know about each other. I'll come back to the New Mexican Fred later.

Word of his wonderful burger spreads, and by 1995, Fred is thinking about opening up other locations in his area. He starts another restaurant in a town not far away across the state line in Nosepick, Texas. He also decides to call the restaurant "Fredburger" after his signature menu item. It's a hit. But, by the time Fred opens his third restaurant in 2005, he's overwhelmed and can't run three restaurants on his own.

So, Fred decides to enter into franchising agreements to have independent owners open their own "Fredburger" restaurants and run them according to the rules in the franchise agreement.

After he's signed on about ten franchisees, his lawyer says, "You know, you want to be able to efficiently sue in federal court for monetary damages, instead of using state courts and having to prove your trademark rights every time. Maybe you should think about registering your 'Fredburger' mark, so that you have a tool to make sure your franchisees don't use your mark for other stuff."

It's at that point that Fred calls me. He gives me the whole story and I start preparing his trademark registration application. Now, one of the things that is required for a US trademark application is an allegation of "first use". Because the trademark registration system is based on the commerce power in the Constitution, a jurisdictional requirement is to allege a date when the mark was first used in interstate commerce in the US. Now, I'm not chasing down a long legal rabbit hole to unpack that here, because it alone is a deep subject. But, as a practical matter, I want know:

"When did you first use 'Fredburger' for a burger menu item?"

I guarantee you, nine times out of ten, Fred himself doesn't know the answer to that question. "Oh, it was back in the late 1990's, I can't remember what year. I think maybe it was the same year my Aunt Betsy got married, because they had wanted me to cater the reception and serve Fredburgers at it."

At that point, Fred will tell me that he'll go see if he can dig out Aunt Betsy's wedding invitation, in order to figure out when he first started using 'Fredburger' as a mark for burgers, and I'll have to tell him that's not really necessary, because we're only looking for an 'at least as early as' date. So, if he can pin down some date when he knows he was making Fredburgers, then that's going to be helpful.

Then, my next question is going to be:

"When do you first use 'Fredburger' as the name of a restaurant?"

Notice, that the mark is for two things. It is a mark for burgers with a first use date around the time of Aunt Betsy's wedding, and it is ALSO a mark for restaurants, with a different and later first use date.

This leads me to the other point worth making, since we are now talking about "when did a trademark become distinctive" which is really kind of a circular question, as phrased, since a trademark IS distinctive by definition. The real question is "when did it first function as a trademark."

Returning to the ACPA language, and if we are simply looking at "registration" instead of "use" or "trafficking", it's pretty much common sense that in order to register a domain name with a bad faith intent to profit from a mark, that the mark had to exist at the time the alleged cybersquatter registered the domain name - since otherwise, there would be nothing against which to exercise the "bad faith intent".

That said, the puzzling aspect of your question of "how do I find out when a mark became distinctive" is, I assume, being asked on Namepros - a domain name forum - out of a concern to avoid liability for cybersquatting.

I mean, what problem are you trying to solve? Presumably, anyone who registers a domain name knows why they did it. So, if they registered the domain name because they had heard of a mark being used by someone else, I think they are going to know that. But if they had some other reason for registering the domain name, then they are going to know what that reason is too.

Sure, as a practical matter, one can certainly run into credibility problems about whether or not a judge is going to believe your "non-trademark reason" for having registered the domain name. But having a judge or jury not believe your story of innocence is not something new, unusual, or specific to the law concerning domain names.

Maybe I'll come back to "what about that other guy in New Mexico" question, later, but my coffee is ready, so let me make sure I answer your specific question:



In my example, the answer would "ask Fred". Maybe there was a newspaper article about it at the time. Maybe someone can find advertisements that Fred made at the time.

But, sometimes - and having defended hundreds of these cases, you better believe I spend a lot of time researching this question in particular when I defend a case - you aren't going to be able to know the answer to that question with the sort of precision you think should be available to you.

Sometimes, you have to go to great lengths to figure out what an answer might be. In a recent case I defended, the domain name was Pitstop.com. The Complainant is a Brazilian auto parts chain who claimed to have been using the mark "PITSTOP" for retail auto parts in Brazil since 1922.

Now, think about that for a minute. Brazil in 1922 was not the most developed country in the world, and "pitstop" is an English term derived from the sport of auto racing. How long do you think people were racing automobiles in Brazil, and when did "pitstop" even become a word used in auto racing?

So, in answer to your question of "Where do I find out when a mark became distinctive" here's what I had to figure out in order to investigate their claim of having used "PITSTOP" as a mark since 1922:

Show attachment 266363
Show attachment 266364
Show attachment 266365

Think about that for a minute.

Taking your question of "How do you know when a mark was first used?" and applying it to the pitstop. com UDRP proceeding, I had to look into (a) the history of the word, (b) the history of the Brazilian auto industry, (c) the history of auto racing in Brazil, (d) the history of the Complainant in particular, (e) relevant trademark filings in Brazil, (f) relevant corporate registration records in Brazil, and, of course, (g) whatever I might be able to find through relevant domain name regsistrations, archive.org, and so on.

That's just one answer to your question of "How do you find out when a mark was first used?" as applied to that specific set of circumstances.

But I do believe I get your perspective. There are a lot of things that seem like they should be simple to someone new to the subject, but which really aren't as simple as they may believe. Take skiing, for example. All you have to do is stand up on some long planks and slide down snow on a mountain. How hard can it be?

The UDRP decision, if anyone is still reading at this point, is here:

https://www.wipo.int/amc/en/domains/decisions/pdf/2023/d2023-5318.pdf

"The Respondent makes a compelling case for not being aware of the Complainant and its trademark at the
time of registration of the disputed domain name. The Complainant does not advance a single reason to
believe that the Respondent, based in the United States, at the time of registering the disputed domain name
in July 1994, should have known of the Complainant or, for that matter, should have known that PIT STOP
was used for an auto parts business in Brazil. The Panel also notes that none of the Complainant’s
trademark registrations predates the registration of the disputed domain name (although at least one of the
registrations was merely a pending application at that time). Therefore, the Panel finds that the disputed
domain name was not registered in bad faith."

The question of "When did they first have a mark?" was never actually answered.

However, the more important question of "Is it likely the domain registrant aware of the mark when he registered the domain name?" WAS answered.

That second question is much more important than the first one.

Thanks for that masterclass explanation, John. That was easy for a layperson such as myself to follow, and really helped clear up a lot of confusion I've had.

This post should be pinned for all the future questions that will inevitably be asked about this exact topic.

 

[jberryhill]

Eventually, I’ll get around to reformatting these things as a reference resource.

 

[Charac]

​

Jberryhill - appreciate your expertise. Hopefully that will help others along similar lines.

BTW - There seems to be somewhat of a consensus on NamePros (at least as far as I can tell) that when listing domain names for sale on a seller marketplace, Buyers are the ones liable for possible infringements. However I buy new domains, that I may either develop into sites or sell. While wanting to avoid liability. - But surely enough said!

 

[jberryhill]

However I buy new domain names, that I may either develop into sites or sell. While wanting to avoid liability.

A couple of thoughts about that.

Obviously, you know why you are acquiring a domain name. If you are not doing so because of someone's mark, then there was some other reason why you believed that name to be worth registering. And, you are right, there could be a trademark claim out there of which you are unaware.

There is no 100% way to be sure. And that's like anything else in life.

I have my annual cardiologist appointment coming up next month, since I am six years out from having had a heart attack during which CPR failed and I was defibrillated back to life in the back of an ambulance. Now, my doctor is a really, really smart guy. At the end of every visit, I ask him, "So, am I going to live?" and he laughs and says "Yes."

Then I follow up with, "How long?" and he stops laughing and says he doesn't know. Back when I was on the table having a cardiac catheter inserted into my femoral artery and then snaked up into my heart like a drain rooter to open up my left anterior descending cardiac artery and insert a stent, he asked me, "What do you do for a living?" and I told him I'm a lawyer. He followed up with "What kind of law?" and I told him "Medical malpractice." That's a real howler of a joke when you have five people keeping you alive with machines.

In any event...

What these things turn into, as a matter of practical reality, is a contest of "what is more likely?" - Did the registrant probably acquire the domain name because of some objectively reasonable assessment of its value, or did the registrant probably acquire the domain name because of its value as a trademark?

What I've seen some people do is actually save the searches and results they conducted when they acquired the domain name. But, sure, sometimes you have to make rational decisions and cut your losses.

And that too is like anything else in life. If you raise goats, every now and then, you are going to lose a goat from whatever cause - illness, injury, predators, etc.. If you sell things, every now and then, one of the items in your inventory is going to be stolen, or is damaged and you either can't sell it or have to take a loss selling it.

What I've also noticed over the years is that domaining attracts more than its share of people who can be broadly described as neurodivergent. While having interesting creative processes, some folks can be a little concrete in their thinking and have a hard time dealing with uncertainty and ambiguity.

Legal dispute are not all win-lose propositions. As I've mentioned many times here, out of the thousands of lawsuits filed weekly, most of them - over 90% of them - are never going to be decided by a judge or jury. The overwhelming majority of them settle. That's not true of UDRP's, for a number of reasons I'm not in a mood to go into right now.

So if you are hand-registering .com's at, what, $15 a pop or whatever it is these days, you are not talking about some huge investment here if someone shows up with a senior trademark claim and the overall circumstances suggest they would probably win if push comes to shove. Now, at what level a dispute might settle will depend on the relative strength of the arguments on either side. I've got a situation I've been dealing with for the last couple of weeks where the trademark claim is pretty weak, the domain registrant has come down to a reasonable level, and now the other side is making noises that suggest they'd rather fight it, and I'm inclined to say, "Okay, go ahead" because they are going to lose, but they just don't appreciate that.

Another part of your question that I skipped over is that you were talking about when a mark becomes "distinctive" and I was talking about when a mark is launched. Most of the time, that's going to be the same answer. "Xerox" was a distinctive mark on day one, since it doesn't mean anything else. However, "Coca-Cola" was not, since that was just the names of two ingredients in it. Same with "American Airlines", which would simply be a descriptive term referring to airlines in America, but for the fact that they've been doing it since 1939 and everyone who flies understandst that it is a distinctive mark. So, there are some descriptive terms that are not initially distinctive, but acquire distinctiveness through longstanding substantially exclusive use. And if you want to know "On what day did 'American Airlines' become distinctive?" then you aren't going to get an answer - because there isn't one.

It's like asking on what day did someone become "old". I used to be young. Now I'm old. So, you tell me what day did that happen between the early 1960's and now?

I'd really like to know, because it seems like half my life involved people telling me I was "too young" to do what I wanted to do, and the rest of it has been people telling me I was "too old" to do what I wanted to do. I want to know when was that magic day in my life when I could have done all those things? What did I spend that day doing, because I obviously wasted the greatest opportunity I ever had.

That's the sort of question that "when did a trademark become distinctive" is. Depends on the mark. Depends on the relevant market. Depends on the sophistication of the consumers in that market. But, other than the usual situation where the mark is distinctive for the goods/services on day one - Xerox, Yahoo, Microsoft, Verizon, Google, Monster (the energy drink), Monster (the electronic cable company), or Monster (the online employment service) - you aren't going to find out when a mark became "distinctive" any more than Fred Frites can remember when his Aunt Betsy's wedding was.

Human behavior - and trademark law intersects with human psychology - is not as neat, clean and precise as people would like it to be.

In any business, legal issues are going to pop up. Avoiding liability has a lot to do with what you do when that happens.

 

[Charac]

Dare I ask: are you of the opinion that domain buyers in the secondary market/from a marketplace, are liable for investigating chances of infringements rather than sellers? - I'll understand if you want to forgo this, toward the interest of not opening a whole new galaxy of possibilities ...

Sealing a wrap on this: in the event you don't happen to answer a firm "yes" to the above -- as part of what you do, professionally speaking (while noticing your tag) . Do you provide opinions for Sellers on transferring domains based on the limits of what you are provided ?

 

[jberryhill]

are you of the opinion that domain buyers in the secondary market/from a marketplace, are liable for investigating chances of infringements rather than sellers?

Absolutely. At the end of the day, if a trademark owner is upset by a domain name that you have, then they are going to come after you and not really care what some seller or marketplace told you.

Try this on for size, from Sedo's purchase terms:

https://sedo.com/us/about-us/policies/purchase-and-sale-agreement/

b) The Buyer understands and agrees that it is their sole responsibility and duty to perform all necessary due diligence before entering into this agreement to buy the Purchase Object, including research of fitness for particular intended uses, trademark clearance, or anything that could inhibit their future use and enjoyment of the Purchase Object.

That's not my "opinion". That's what every marketplace agreement says.

as part of what you do, professionally speaking (while noticing your tag) . Do you provide opinions for Sellers on transferring domains based on the limits of what you are provided ?

I am a lawyer who has been practicing in IP law for over two and a half decades. In particular relationship to domains, some people think I'm pretty good at it. Yes, providing opinions is part of I do for a living. I do not provide specific legal opinions to people seeking legal advice on public forums, because that would be instant malpractice, given the obligation of confidentiality that is required of legal services.

 

[Charac]

Absolutely. At the end of the day, if a trademark owner is upset by a domain name that you have, then they are going to come after you and not really care what some seller or marketplace told you.

But, following a domain marketplace transaction, such as at Sedo: can a trademark owner come after a Seller (original registrant) outside of the new Buyer? Or is the marketplace-Buyer considered a registrant fully responsible once the domain becomes transferred?

Mainly I am asking about the case of an .io extension related action (WIPO) -- that only requires bad faith at the time of registration OR in use, not both (stressing the former).

Also too, can an .io (WIPO) apply to a registered .com?

 

[jberryhill]

can a trademark owner come after a Seller (original registrant) outside of the new Buyer?

Can they? Sure. But why would they?

If a trademark owner is of a mind to go after a domain name, then they are going to go after whomever has the domain name. Why would they engage in some recreational pursuit of someone who doesn't have what they want? Just for fun?

Take the Lambo.com case, for example. The current registrant bought it from some guy names James Lambeth for $10,000. Now, it could be that James Lambeth actually had been long using the name "Lambo" and had what the court would consider to be a more tangible defense. But Lamborghini doesn't care about him anyway, because he doesn't have what they want to get.

Bottom line - when a TM owner is inclined to litigate over a domain name, they are going to go after the person who has it. Period.

People don't tend to engage in recreational litigation against others simply for the entertainment value.

Mainly I am asking about the case of an .io extension related action (WIPO) -- that only requires bad faith at the time of registration OR in use, not both (stressing the former).

I don't know what you are driving at here. There is no functional distinction to be made with the .io policy's use of "or" and the .com policy's use of "and" in this context.

Where the UDRP, which applies to gTLDs, refers to "registration and use" they are talking about the current registrant's registration of the domain name, not when it was registered by some prior registrant.

In other words, let's say that someone registered Example.com in 2000.

In 2010, Bigshoe company started using "Example" as a trademark for shoes.

In 2020, you buy Example.com from the original registrant because you are aware of the newer trademark for shoes, and you start using the domain name to advertise shoes.

Today, Bigshoe files a UDRP against Example.com.

The UDRP requires Bigshoe to show the domain name was "registered and used" in bad faith. Well, yeah, they are going to win on that point because you registered the domain name in 2020 for deliberate purpose of exploiting their trademark, and you proceeded to use it for that purpose.

Also too, can an .io (WIPO) apply to a registered .com?

I have no idea what you are asking here. There is a dispute policy for .io names. It applies to .io names and has some differences from the UDRP, which applies to .com names.

No, the .io policy does not apply to .com names.


Edited to add - Oh, yes, I do remember one case where the former registrant was among the defendants in the suit, and was pretty much along for the ride before settling out. It was one of my earlier cases, and the Plaintiff was a little.... odd.

https://www.courtlistener.com/docket/4614656/poe-v-schiafone/

So, yes, the former owner/seller and the buyer were represented by two different attorneys. But after some initial procedural fun & games, the plaintiff realized that going after the former owner/seller wouldn't get him the domain name and agreed to dismiss him from the case.

The case, like most cases, eventually settled.

What was even funnier was that the Plaintiff didn't renew the domain name a couple of years later. The same party - Greg Ricks - re-acquired the domain name on the drop and recently sold it:

Fun stuff.

 

[Charac]

No, the .io policy does not apply to .com names.

Just to make sure we're on the same page. With your continued posting appreciated....I guess I could have posed the question a little better:

Dispute Resolution Policy (for .IO):
https://www.wipo.int/amc/en/domains/cctld/io/index.html

"It is sufficient for the complainant to prove that either registration or use of the domain name is in bad faith, whereas the UDRP requires the complainant to prove both "

So a .io trademark owner pursuing to capture a registered .com domain (or .net or .org for that matter) would have to meet both UDRP criteria?

(Funny you should mention Poe -- he used to visit around here.)

 

[jberryhill]

So a .io trademark owner

What is "a .io trademark owner"?

If your trademark is "EXAMPLE" and you are going after Example.io, you have to use the .io dispute policy.

If your trademark is "EXAMPLE" and you are going after Example.com, you have to use the UDRP.

People make a big deal over the difference between one policy using "or" and the other policy using "and", but I can tell you that it doesn't make a warm bucket of spit's difference 99% of the time.

Funny you should mention Poe -- he used to visit around here.

He used to visit Namepros?

I guess he quit doing that...

 

[Charac]

If your trademark is "EXAMPLE" and you are going after Example.io, you have to use the .io dispute policy.

If your trademark is "EXAMPLE" and you are going after Example.com, you have to use the UDRP.

That answers it, thank you. I have a two part .com name I registered after discovering a very close .io name.
Where the second-level domain is the trademark.

(Poe) He used to visit Namepros?

Actually a town in Southern Ohio (sorry to be so secretive).

 

[jberryhill]

I have a two part .com name I registered after discovering a very close .io name.

 

[Charac]

Correction: What I meant to say was I registered the .com and then, discovered the .io

Never been concerned or even known about .io's until now...

Hugh Grant headbanging still applies.

Forgive me if I don't add a thanks or like.

 

[NameGroove]

Once you grasp that having a trademark has nothing to do with the USPTO, a light is going to go on and you’ll realize why a lot of your questions on namepros don’t make sense.


No, they are not referring to an oddball situation. The problem is that you don’t understand that having a trademark in the US has nothing to do with whether the owner chooses to register that trademark.

I’ll just copy and paste this from one of about a dozen prior posts here, but the moment you understand this, your thinking is going to shift:

“In the US and many other countries, one does not 'get' a trademark by filing an application with a government office. The way you get a trademark in the United States is by using a mark for goods or services such that the mark is capable of distinguishing your goods and services from others in the relevant market.”

Registering a mark provides several benefits, but you can have a perfectly enforceable trademark without ever filing an application with the USPTO.

A trademark become distinct as soon as it is recognized by consumers as an indicator which allows them to differentiate between competing goods in the marketplace for those goods. It has absolutely nothing to do with anything that happens at the USPTO.

This should be printed and pasted on everyone's computer where they register domains. Succinct and to the point. Thanks!!

Would a TM holder that has filed with the USTPO be more likely to win a UDRP case than a TM holder who has not filed? Or is there no difference in the % of UDRP wins (whether filed or not)?

 

[Charac]

....Would a TM holder that has filed with the USTPO be more likely to win a UDRP case than a TM holder who has not filed? Or is there no difference in the % of UDRP wins (whether filed or not)?

Throughout so much supporting dialogue, this seems to be so much about what John Berryhill seems to be telling us above. That it's not so cut and dried. It depends on a case-by-case basis.

That looking to USPTO registrations could act as a false indicator.

 

[jberryhill]

Would a TM holder that has filed with the USTPO be more likely to win a UDRP case than a TM holder who has not filed?

Having a trademark registration makes things simpler because the registration serves as prima facie evidence of the validity and ownership of a mark. If you file a complaint on a common law basis then you have to provide a lot more evidence to back up your claim to own a mark. With a registration, that’s already done.

That looking to USPTO registrations could act as a false indicator.

What I’m saying is that most of the time, the average Namepros user has no idea what they are looking at when they consult the USPTO database. That is not the same thing as someone showing up with (a) a registration on the Principal Register and (b) evidence of ongoing use of the mark, in the context of a UDRP proceeding.

The main point made above is that REGISTRATION IS NOT REQUIRED TO OWN A TRADEMARK.

As also mentioned, it is desirable to register one’s mark in order to have some procedural advantages and conveniences if one seeks to enforce one’s rights. So, sure, it helps to do that.

 

[NameGroove]

Having a trademark registration makes things simpler because the registration serves as prima facie evidence of the validity and ownership of a mark. If you file a complaint on a common law basis then you have to provide a lot more evidence to back up your claim to own a mark. With a registration, that’s already done.

Makes sense. Thank you - you are generous with your time and it is appreciated.

 

[scithe]

The Fredburger in New Mexico definitely reminded me of Buc-ee's.

For those unfamiliar with Buc-ee's, it's a big ass gas station with half a Walmart inside. I might be the only guy in FL not going gaga over it as they've expanded from Texas to here in the last few years.

There has been numerous litigation over the name including against Bucky's a similar convenience store out of Nebraska. I think initially they agreed to co-exist and not expand into states where the other already exists.

I read an article a while back that Buc-ee's started going after other animal mascot logos including ones that don't involve a beaver or the same color scheme or pose.

Could be a fun Google search. Also, Fredburgers on Tuesdays reminds me of the Taco Tuesday trademark where Taco John's had the trademark in New Jersey for longer than Taco Bell and when the mega company finally got their "win" they gave out free tacos last year.

 

[Charac]

Trying to understand this better:

With so many registrations on USPTO gone dead or else abandoned.

- Can this be used to affect the strength and continuance of a common trademark by the same holder?

- Are there cases where marks having gone dead, that have still been used to enforce rights?

 

[vrwrys]

Throughout so much supporting dialogue, this seems to be so much about what John Berryhill seems to be telling us above. That it's not so cut and dried. It depends on a case-by-case basis.
That looking to USPTO registrations could act as a false indicator.

Registration makes it easier to prove in case of a dispute. In other words, you don't have to go on a fact finding expedition.It's on file.Similar to copyright law,where your work is protected on the creation date.If it's not registered, you have to prove your work was done first.