By Steve Levy
In UDRP cases, a key threshold test for succeeding is the ability to prove you have the trademark rights. And recently there have been a few cases in which the complainants were unable to do so. These cases are instructive for brand owners who are considering domain name enforcement actions.
It is a well-accepted principle that a trademark need not be registered in order for its owner to prove the existence of trademark rights. The concept of common law (unregistered) trademark rights dates back millennia and has been adopted by UDRP panels. While it’s a simple matter to show a copy of a trademark registration certificate, when asserting common law rights, much more evidence is needed to prove that the asserted term has acquired secondary meaning (i.e., it functions as a trademark and is recognized as a brand by the public) and the approximate date on which it gained this status.
In a recent case against the domain name familypolicyfoundation.org, the Complainant claimed that it has common law trademark rights in the phrase FAMILY POLICY FOUNDATION based on a few years of use. It submitted copies of emails, webpages, print materials, social media posts, videos, banners, and also noted that it hosted other activities directed at donors such as a national conference. Despite all of this, the 3-member Panel found that “although Complainant has adduced evidence, much of it involves internal or outward communications made by Complainant, and there is very little evidence of any degree of third-party or public recognition concerning Complainant’s mark (such as proof of consumer recognition, or unsolicited media coverage or third-party publications) as a distinctive identifier of Complainant’s services.” Worse yet, the Panel noted that “some of the evidence introduced by Complainant would appear to undermine its arguments that its mark has become a distinctive identifier or that Complainant has otherwise acquired common law rights. In particular, this evidence indicates that Complainant has been inconsistent in the use of its mark…” This last comment referred to the fact that much of the submitted evidence didn’t show use of the phrase FAMILY POLICY FOUNDATION but related phrases such as “Family Policy Alliance” and “Family Policy Council”. Since the asserted mark is rather descriptive to begin with, this inconsistency led the Panel to conclude that “that Complainant has not established trademark rights for purposes of the Policy.”
In contrast to the above case, the Complainant, a musician taking action against the domain name zachbryanmerch.us, asserted common law trademark rights in the name ZACH BRYAN. He submitted into evidence, among other items, screenshots of YouTube videos showing hundreds of thousands of views, social media pages with many millions of followers, and promotional materials for a number of famous concerts and events at which he had performed. The Panel here noted that “This evidence speaks to the duration and nature of use of Complainant’s mark, the nature and extent of advertising using the mark, and the degree of actual public recognition of the mark.” It went on to find that “the evidence [is] substantial and supports the claim that the ZACH BRYAN mark has gained secondary meaning and thus functions as an indication of the source of Complainant’s services.”
What can be learned from these contrasting situations is that, in order to claim common law trademark rights, the mark must be used consistently (as all trademarks should be) and evidence should be provided that shows the reputation the claimed mark has with the public. Showing marketing, advertising, and promotion efforts are certainly helpful, but the real value is in evidence that shows the effect of these efforts on customers and the public at large. Simply showing a screenshot of the complainant’s website and then stating, in the text of the complaint, that the mark has been used for many years, is simply not enough and is likely to be rejected by a UDRP panel. However, more robust proof featuring the mark will often be accepted. Think about submitting things like social media pages, independent news articles, business rankings and awards, photos of people attending a sponsored sports or cultural event, and photos of customers walking around a trade show booth. Of course, at least some of these materials should be dated from prior to the registration of the disputed domain name. Unless you’ve got a merely descriptive mark that’s not capable of embodying any trademark rights (e.g., Phone Repair), this should get you through the first hurdle of the UDRP.