Recent Case Notes & Commentary

A TRADEMARK APPLICATION IS NOT A TRADEMARK

Pivotal to any UDRP case is that the complainant must establish that it has a trademark. This has to be proved. It is usually done by attaching a copy of the trademark registration.


You would think that complainants (and their lawyers!) would know that it is no use exhibiting an application for a trademark, because an application for a trademark is not a trademark [1]. It is an application for a trademark. But apparently they do not know this and have to be told, over and over again.


The latest instalment is the decision by US panellist M. Kelly Tillery, Esquire in the case of Walker Edison Furniture Company LLC v. WARNE, MARTIN  a FORUM decision (FA1804001784459 23 May 2018). The home décor complainant used the FOREST GATE mark to promote its business and took exception to the respondent having registered the <forestgate.com> domain name;  it was the name of the Respondent’s suburb in the UK. The Complainant had applied for a trademark and relied on the application for the trademark as its trademark to bring the claim. The panellist had no difficulty in finding that “pending USPTO applications do not confer rights in a mark under Policy ¶ 4(a)(i).”This was one of the reasons why the Complainant lost and ended up having a finding of Reverse Domain Name Hijacking made against it.


OTHER DECISIONS

Just for the record, there are other decisions you can cite for the same proposition on the inadequacy of applications for trademarks: Imagine Nation Books Ltd. v LEE, LAWRENCE, (FA 1662128 31 March 2016) (“Complainant’s only assertion of rights in the mark stem from a trademark application and the statement that Complainant offers ‘services and goods under the name Collective Goods’… [and] pending trademark applications do not establish rights in a mark under Policy ¶ 4(a)(i).”).  See ValueVapor LLC v. Vicki Oxman (FA 1542157, 20 March 2014) (denying Complainant’s rights under Policy ¶ 4(a)(i) as “[t]here is no evidence of a registered trademark and it has long been held that a pending application for registration is not sufficient to prove trademark rights.”)



[1] Probably because applications have not yet been examined or tested for objections.