Trademark v. Domain Name: USPTO Registered Trademark Owner Loses Domain Name Arbitration – UDRP/ICANN

Filing a trademark application with the USPTO for a descriptive trademark does not provide enforceable trademark rights until secondary meaning can be established, after which the trademark can be registered on the principal register from the supplemental register. The trademark owner learned the drawbacks of choosing a descriptive trademark when attempting to enforce its trademark rights against a domain name registrant in a National Arbitration Ruling that was filed under the Uniform Domain-Name Dispute-Resolution Policy (“UDRP”).

Complainant trademark owner B&V Associates, Inc. filed a trademark application for its trademark on July 26, 2000. However, because the USPTO deemed the mark was merely descriptive of applicant’s services, B&V amended its application to seek registration under Trademark Act Section 2(f), 15 U.S.C. Section 1052(f), based on acquired distinctiveness as a result of continued and exclusive use since 1996. On June 18, 1999, a year before B&V’s trademark application was filed, Respondent registered the domain name. The Panel found that at the time of Respondent’s domain name registration, Complainant, as admitted by its Section 2(f) filing with the USPTO, had not established trademark rights because it had not acquired distinctiveness. Accordingly, because Complainant did not meet the initial burden of presenting a sufficient prima facie case showing of enforceable rights in the trademark at the time of the domain name filing, the Panel denied cancellation or transfer of the domain name. Click To Read The Decision.

PRACTICE NOTE: It is best to adopt a trademark that is immediately protectable and enforceable. Descriptive trademarks are not immediately protectable and require a showing of acquired distinctiveness. Click To Read Suggestions On Selecting A Proper Trademark.