Recent Case Notes & Commentary

Evidence Needed to Prove Unregistered Trademark: Another Salutory Lesson

It is well understood that a registered trademark is not needed to succeed in a UDRP proceeding and that a common law or unregistered trademark is adequate under the UDRP Policy. But what happens with some frequency is that the evidence needed to satisfy the arbitrator that there is an unregistered trademark is either not available or not adduced.


A recent case where this happened is inXile Entertainment, Inc. v. Telecom Tech Corp (WIPO case no. D2009-0655, 2009). The Complainant was a manufacturer of video games under the name Super Stacker and applied for a US trademark in that name on April 7, 2009, with a claimed first use in commerce stretching back only to November 12, 2008. Apparently, no further progress had been made on the application since it was filed.


The Complainant alleged in the UDRP claim that it had an unregistered trademark in SUPER STACKER. The evidence adduced to support this claim seems to have been slight.


Not the least of the Complainant’s problems was that the claimed mark consisted of two common generic words and there was not a lot of evidence that showed any distinctiveness or link to the Complainant. Moreover, there was no evidence of:

(a) expenditure by the Complainant on advertising;

(b) third party recognition of the mark as referring to Complainant’s product, which was disturbing, as there were other similar products using either ‘stack’ or ‘stacking’ in their name;

(c) company literature using the name.


Nor was there a complete description of the product on its website. There was, however, reference to the product on a third party website, but after the domain name had been registered.


None of this evidence was adequate and, although the case was undefended, the panellist held that the evidence was “not sufficient” to establish a common law trademark and the complaint was dismissed.


The general principle must be stated again, that both in terms of the Policy There is insufficient evidence for the Panel to conclude that “Super Stacker” is either inherently distinctive, or that it has acquired a secondary meaning, denoting, in the minds of the relevant class of consumers, the Complainant’s products. The claimed mark consists of two relatively common English words, and, as noted above, there appear to be other similar products in the market which include the word “stack”, or the word “stacking”, in the product name. There is no evidence of any amount spent by the Complainant in advertising its product under a SUPER STACKER mark, nor any evidence of third party recognition of the claimed mark as referring to the Complainant’s product. No letterhead or business card bearing the claimed mark has been produced, and nor has the Complainant produced a complete description of its product, or a copy of its website at “www.super-stacker.com”. All there is, is the fact that the game was first described apparently in a third party website, in November 2008, only some three months before the Domain Name was registered. How long it remained on that website is not stated, and the Complainant does not appear to have claimed any “first use” date in its subsequent trademark application.


In the Panel’s judgment, the evidence just described is not sufficient for the Complainant to establish that it has common law rights in a SUPER STACKER mark, and the Complaint must be dismissed accordingly.


Common practice, issues such as the existence of a common law trademark must be proved by evidence and every effort should be made by a Complainant to adduce this evidence and, from a Respondent’s point of view, drawing attention to its absence.