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Recent Case Notes & Commentary

Trademarks Based on Geographic Terms

In the first case, Hayward Industries, Inc. v., Inc, (WIPO Case No. D2009-1493), the domain names at issue were <> and <> and the trademark relied on was a registered USPTO mark for HAYWARD. The city of Hayward in California has a population of about 150,000 people. The respondent did not mount any objection to the Complainant relying on the registered trademark and the domain names were held to be confusingly similar to the trademarks (and, indeed, <> was identical to it).

In contrast, the Complainant in Loma Linda University Adventist Health Sciences Center and Others v. Development Services, StateVentures, LLC (WIPO Case No. D2009-1059), where the domain name was <>, had to prove an unregistered trademark. The controversy in the case arose because Loma Linda is also a city in California with a population of about 22,000 people. In a split decision, the majority (of which your correspondent was one) found that the Complainant did not coin the name Loma Linda which in fact predated the Complainant.

Loma Linda - The Californian town at the centre of the controversy

In any event, the majority also found, “the Complainant’s claim of secondary meaning in LOMA LINDA fails because over the years LOMA LINDA has become utilised by others in numerous contexts…” and they cited examples where other domain names had incorporated Loma Linda such as <>. The Complainant thus failed to establish the trademark. The minority held, as he had previously held in Loma Linda University Adventist Health Services Center, et al. v. JM XTrade, Inc., Joseph Martinez (WIPO Case No. D2009-0036) that “the Complainant does have common law rights in the name “Loma Linda,” despite the phrase now being used as a geographical name.”

But it is apparent from both the majority and minority decisions that adducing evidence of a persuasive nature is vital to establish or rebut the existence of a common law trademark.


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