Common Law Trademark

**Momentum** · 02-07-2003, 12:51 PM

Been contacted by the previous owner of a domain name for a name that I registered back in November 2002. I don't want to sell but they are telling me that they have a trademark based on common law (no official filing with PTO) and are threatening to go UDRP.

Now this sounds like a flimsy defense to me. And after searching the UDRP archives, I am pretty confident about my position here.

But I am quite interested to hear what you guys think about this situation. I haven't seen much about common law trademarks here on dnforum, so maybe we can all learn something.

**jberryhill** · 02-07-2003, 02:34 PM

One interesting thing to know is whether they are located in a jurisdiction that recognizes common law rights in trademarks. Are they in a state of the US, for example?

A trademark is a word, device, or symbol which, through use in commerce in connection with particular goods or services has come to distinctively signify the source or origin of those goods and services.

In order to do that, the trademark must first be *capable* of acquiring such meaning in the minds of consumers. Other factors affecting the status of a common law trademark will be the degree of inherent distinctiveness (is it fanciful, arbitrary, or descriptive), the length of time and geographic extent of use, the amount invested in promoting the mark *as* a mark, etc. Any good primer on trademarks describes these factors, and there is no need to recycle them here.

Can they win a UDRP on a common law claim? Sure they can. UDRP panels have a very low threshold of proof for common law marks, although it is evidentially somewhat more difficult than for a registered mark.

But the story doesn't end there. There are *three* things which must be proven in a UDRP complaint, and whether or not they have a trademark claim is simply one of those three things.

Typically, if the term at issue is not facially descriptive or generic to the complainant's goods or services, then the UDRP panel will find a trademark claim, or they will "pass" on the TM issue if there is a clear respondent win on either of the other two issues.

Again, these questions always seem to be asked backwards, from the perspective of "Do these guys have a trademark?" Most of the time, that question is not as important as whether *you* had a reason for registering the domain name that is independent of any knowledge or motivation arising from whether or not they have a trademark.

**Momentum** · 02-07-2003, 10:19 PM

Hello John,

Thanks for the input. Yes, this company is located in the states and their business appears to be totally internet-based. Not sure how long they used the name. Although it is somewhat distinctive, it is definitely not a name that any one would recognize unless they had happened to stumble across the website. And even then it is pretty generic and forgettable.

I feel that I am using the domain name in good faith, promoting a service related to the name. And to be honest with you, the reason I registered the name was due to lots of existing links and directory listings. Nothing to do with the actual meaning or recognition of the name itself.

I guess we will just have to see how this situation pans out!

**jberryhill** · 02-07-2003, 11:20 PM

"Although it is somewhat distinctive [...] it is pretty generic ...."

In trademark law a word that is "generic" is not capable of being at all "distinctive". So, it's hard to make sense out of what you are saying.

A generic term is a word which is virtually impossible to avoid using in connection with the class of goods or services. For example, Alpo is a brand of dogfood. You can't have a brand of dogfood called "dogfood", because that would render others unable to use the word dogfood in connection with that product which is pretty much only known as "dogfood".

**domainsales** · 02-13-2003, 01:31 AM

I own a domain name and website. It's been up for a few months now, the word is in a foreign language (the writting obviously in latin characters).

This name does not describe AT ALL the services I provide on my website. Example: The name is "DOG" and my website is a portal or email service.

Again the name doesn't mean anything in the English language, it is not translated, it is just written in English, but the pronounciation means something in a different language.

I am in the U.S. and plan on forming an LLC using that name as well. Any input of help would be apreciated.

Do I need to register the name as a trademark?

**HOWARD** · 02-13-2003, 08:58 AM

The word "BAY" had nothing to do with auctions, until EBAY started using it and became successful. If you have a product or service that is unique and you wish to associate it with this foreign word that has no English meaning, you may want to consider registering it for that use with the U.S.P.T.O.