What are the standards for common law trademarks in UDRP cases?

JulienJ

Member
A National Arbitration Forum panelist recently awarded the domain name YouAreOK.com to T & P Holding Company, LLC. This company owns several hair salons and boutiques in Nashville under the name Local Honey. Its website is LHNashville.com.

The domain name owner, Ancient Holdings, LLC, has lost a handful of UDRP cases over the years. It also didn’t respond to the dispute. These factors certainly weighed against the registrant.

But I’m concerned that this case got past the first prong of UDRP: that the domain name is identical or confusingly similar to a mark in which the complainant has rights.

"To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.

Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.

(Particularly with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant’s goods and/or services.)

Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning…"

Source
 
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