How common law trademark works with domains?
Commercial Break
Monte: Hello folks we’re back. Welcome to domain masters. We broke for a little commercial and fixed I think the phone line. Stephen, you back on?
Stephen: I’m back on.
Monte: Alright, you sound a lot better now. Great. So we were just talking a little bit about common law trademark in case people didn’t hear the first part of your conversation. What we were discussing was what makes a common law trademark or what the misperception is possibly to people that once you have a use of a mark or an idea that you may not have, that someone that has a file trademark may not have more power than you do. You could actually have more power over them. Maybe you could talk a little bit about the significance of that.
Stephen: Well I mean it comes down to your rights. If you’re using a mark and you’ve been using it lets say for 50 years, let’s say you been using it in interstate commerce, within your area that you have actually done sales, you’re gonna have greater rights than somebody who just came in and started using it as a registered trademark. If its close enough, one of the things you can always do is go before the trademark trial and appeal board (TTAB) and move or file a petition to cancel their trademark. Just as somebody has managed to get a trademark application through the trademark office doesn’t mean they have absolute rights to it.
Monte: Right, right. So by filing a trademark and first of all you can’t file a trademark for a dot com name anyway. You have to file a proper name.
Stephen: You can except the dot com is automatically disclaimed.
Monte: Oh, okay.
Stephen: Okay. There is one caviat to that. Let’s say somebody turns around and files a trademark and you’ve been using it for 50 years. Lets say they don’t contact you immediately. They don’t know about you. 5 years go by. They can after that five year mark file something called their letters of incontestability. At that point, their mark can’t be cancelled unless you can show that their mark has become generic for the goods and services that they are selling which is almost an impossible thing. There are very few examples of that. One of them is like Kleenex. Other than that, you always can go back and try and cancel somebody’s mark.
Monte: Right, right. Let’s see we got a question online here from milikeinfo. As he said it’s easy to prove, just go to uspto. How easy is it to prove trademark to the UDRP panel? Not the act but their buying into it.
Stephen: The UDRP panel has been very very good. You give them a copy of a registered trademark with any government. I don’t mean state government because state marks don’t count but with any federal government. They always seem to accept it. They don’t even require that it be a certified registration.
Monte: I see. I see. So this decision on kiwi now this was a, was it an overwhelming decision in your favor?
Stephen: It was overwhelming in our favor which was rather nice. They said you know they went down the list. It’s required that you go through the list when they discuss it. Is it identical or confusingly similar? Obviously the answer there is yes. Kiwi and kiwi are exactly the same. Then the complainant has to argue that there are no rights or legitimate interests of the respondent, the person who’s defending. They said you know, somebody who’s using it for a search engine or a paper click for a business purpose has right to a legitimate interest. That’s obviously a good thing especially for the pay per click people because often times people have argued oh no, you don’t have any legitimate interest. You’re using it just because, to make money, and while you’re making money off these people are looking for me. They’ve basically said, no this is legitimate interest. After that, the complaintant argued that it was registered and used in bad faith because of course everybody knows about them. Well, the standard is a little bit higher than that. You can’t just say of course everybody knows about us. Under the trademark terms, there’s such a thing that’s famous and there’s a few marks out there that if proven within a country that their mark was famous, then they could possibly say that. But it this case, kiwi is certainly not famous. Good example of a famous mark might be McDonald’s, Nike, things like that. And they said of course you knew about us. It’s not sufficient for showing that it was registered in bad faith. And on that basis, they denied the complaint. Then they turned around and went it one step further and said you know, you had no basis for filing this. What you did here was an abuse to the policy and therefore, reverse domain name hijacking, which means that if they turn around and go file again . . .
Monte: that note is gonna be in there.
Stephen: Right.
Monte: Wow. And these decisions are important because of the precedence of such.
Stephen: Yes and no. They’re important for precedence before WIFO. They’re not important for precedence . . .
Monte: in trademark law. Like federal trademark law.
Stephen: In federal court. Everything, if this was brought to federal court, the decision would be denovo. It would be a full review. Now obviously if you take this wonderful document that was written by these three wonderful panelists (I guess I’m prejudice towards these panelists at this point) and show the court, look they already lost once and they’re trying again. Here’s the reasons why they lost.
Monte: Right, right. So in a federal court, a federal court the WIFO decisions, UDRP decisions cannot be used as like a precedence at all.
Stephen: They’re no precedence whatsoever.
Monte: No precedence whatsoever. Do you see that ever changing?
Stephen: I do not see that changing. What I do see happening and what we’ve been trying to do with a lot of our clients. Some of our clients have substantial amounts of cash and don’t mind going to federal court on a regular basis. We’ve been taking WIFO cases and sitting them in federal court and trying to convince federal courts to put their impramateur on them. When a federal court does that, now it has real precedence in a federal court.
Monte: Right, right.
Stephen: If that makes sense.
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