CircleID offers advice to trademark owners following the recent UDRP decision in WIPO Domain Name Decision: D2008-1441.

From what I understand, trademark owners need to consider the following before they file their UDRP action:

(1) Check to see if the trademark in question has a disclaimer.

A Trademark Registry will usually require an applicant to "disclaim" terms within a mark that are generic or merely descriptive.

If the trademark owner has disclaimed the right to all the terms, then it cannot rely on the registered trademark in a UDRP action. They need to rely on common law rights.

(2) In the UDRP action, be sure to include evidence of common law rights, in case the registered trademark fails to meet the required criteria.

(3) Trademark owners need to update their trademark registrations if the disclaimer is no longer necessary – i.e. if the term within the mark later acquires distinctiveness.