While trademark registration on the Principal Register is prima facie proof of validity and some consideration is given to registrations on the Supplemental Register on proof of acquired distinctiveness, no right accrues to a pending trademark application. The "broad consensus under the Policy is that a trademark application alone is not sufficient to establish rights in a mark." PRGRS, Inc. v. Pak, D2002-0077 (WIPO April 24, 2002). A certificate of registration satisfies the threshold requirement while a mere application to register a trademark confers no rights. "No such presumption arises from a pending application to register a mark." Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO October 17, 2001). Application "for a mark [as opposed to issuance of registration] is not per se sufficient to establish rights in a trademark for the purposes of the UDRP." Wave Indus., Inc. v. Angler Supply, FA 304784 (Nat. Arb. Forum September 20, 2004) (U.S. parties); Amsec Enterprises, L.C. v. Sharon McCall, D2001-0083 (WIPO April 3, 2001) (U.S. parties). This rule applies unless complainant offers persuasive evidence that it has rights to an unregistered trademark under common law principles.
The Panel's finding in Kemosabe Entertainment, LLC v. Mike Nazzaro, D2012-1893 (WIPO November 19, 2012) that Complainant lacked rights was blunt, particular so (I think) because Complainant was represented by counsel: "Complainant [the Panel held] has failed to get out of the starting gate." To have standing to maintain a UDRP proceeding complainant must offer proof that it has a trademark right. The right can be either registered or unregistered, but if unregistered the complainant must offer substantive proof of use in the market place prior to the registration of the domain name. In Kemosabe, the record was hopelessly deficient. Complainant alleged common law rights but "failed to provide any evidence of use whatsoever let alone any evidence to support its conclusory allegations."
Underlying Complainant's problem in initiating the administrative proceeding is that it has an "intent to use" application pending with the USPTO. An ITU application indicates an applicant not currently offering any goods or services. Its entry into the marketplace is prospective. That the applied for mark was published after issuance of a Notice of Allowance does not lift an ITU to trademark status. It is merely one of the steps along the way to certification. A Notice of Allowance (NOA) "do[es] not constitute [a] trademark registration[]." It merely indicates that the mark will be allowed to register after an acceptable specimen of use (SOU). See, for example, See also, NAOP LLC v. Name Administration Inc. (BVI), FA0808001220825 (Nat. Arb. Forum October 7, 2008), citing Xoft Inc. v. Name Administration Inc. (BVI), FA1154179 (Nat. Arb. Forum April 25, 2008). Complainants in those cases filed intent-to-use trademark applications prior to the time that the domain name was registered. The Panels ruled that "the date of registration does not relate back to the date that the application was filed unless there is clear evidence of use in commerce sufficient to create a secondary meaning in the mark."
As a general rule a respondent's good faith is consistent with a finding that it registered the domain name prior to the trademark coming into existence, with the following caveat: a complainant is not precluded from proving acquired distinctiveness antedating registration of the domain name. However, complainant cannot (if the trademark is already in use) rely on its representation of "first use in commerce" in its application; or, if the application is for "intent to use" a mark which by its terms denotes prospective use assert a date earlier than the application. Since assertion of a fact is not proof of its truth priority depends on complainant proving that its trademark was used in commerce earlier in time than the domain name. "[C]laimed dates of first use are meaningless without supporting evidence." eSnipe, Inc. v. Modern Empire Internet, Ltd., D2009-0719 (WIPO August 5, 2009). Under U.S. trademark law, "[t]he allegation in an application for registration, or in a registration, of a date of first use is not evidence on behalf of the applicant or registrant; a date of first use must be established by competent evidence." Rules of Practice in Trademark Cases, 37 C.F.R. § 2.122(b)(2), "Matters in Evidence." See also, Kay Hill, Ltd. v. Texas International Property Associates- NA NA, FA0805001190984 (Nat. Arb. Forum July 9, 2008).
Since a representation of first use in a trademark application is unacceptable without corroborating evidence of secondary meaning, there is certainly no evidentiary presumption in favor of an applicant for an ITU trademark application. The reason for this is that the filing of an ITU application denotes prospective rather than past use of the applied-for trademark. It would take significant legerdemain to prove otherwise. In Kemosabe, Complainant offered no evidence beyond the assertion of a prior right. And, that is not good enough!
Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (Legal Corner Press, 2015). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble. Supplement and Update through August 2016 published January 2017. The Supplement and Update is also available in pdf format free on the publisher’s website, www.legalcornerpress.com/dna-supplement.
