Tag Archives: trademark

Are Post-Registration Audits Reducing Trademark Registry Deadwood?

Some conversation on the Oppendhal e-Trademarks listserv got us curious about the big-picture impact of the USPTO’s efforts to more aggressively audit post-registration use claims. The audit program kicked off in November 2017, and is described here. The program has been somewhat active, generating just over 12,000 Office Actions in roughly two years.

  • 2017: 798
  • 2018: 2,154
  • 2019: 5,926
  • 2020 (so far): 1,009

Audits of 1(a) registrations are slowly climbing, from 67% in 2017 to 75% in 2020; 44(e) and mixed 44(e) and 1(a) audits have remained a fairly constant 5% and 1.5% respectively, and 66(a) audits have actually dropped slightly from around 21% to around 15% of audits. Compared to overall numbers of registrations, though, registrations without 1(a) claims still get a lot more attention – both 44(e) registrations without 1(a) claims and 66(a) registrations are audited at a rate roughly twice their commonality in the registry since 2007.

Only about 550 registrations that received a post-registration audit are no longer active at all. A further 470-some registrations had audits and have fewer classes now than initially, but it’s far more complex than a blog post deserves to figure out exactly when during prosecution or post-registration each class dropped.

Since it’s hard to track whether individual goods or classes are dropped after an audit in a systematic manner, we did the next best thing and looked at a couple of random examples. Whatever the problems are with the methodology, the anecdotal research ended up being more fun anyway. The first two foreign-based registrations that I picked without a 1(a) registration basis were dramatically pared back, well beyond the audited goods or services; the two 1(a) registrations I happened to look at ended up providing additional specimens and their scope remained exactly the same. All the registrants were represented. I’m sure this stark divide would not continue over a larger sample size, and that some US-registrant-owned registrations are being sliced back quite a bit, too, but the dramatic nature of the difference really stuck out.

Example #1

MAYBANK (stylized). Reg: 4442149. Malayan Banking Berhad (Malaysian company). 44(e) registration. Class 16 and 36.

An Office Action audit requesting proof of use for “bond paper” and “plastic wrap” in Cl. 16 and “insurance claims processing” and “issuing travelers cheques” in Cl. 36. The audit prompted a response on far more than just the audited goods and services – the registrant filed a Response deleting huge swathes of goods and services, including the audited goods and more. Of the 223 words for which use was claimed in the Section 8 & 15 filing, 24 words remained after the audit process.

Paper, cardboard and goods made from these materials, not included in other classes, namely, bond paper, copier paper, graph paper, note paper, cardboard; brochures about financial services; catalogues in the field of financial services; leaflets about financial services; magazines in the field of financial services; packaging and wrapping paper of cardboard and paper; plastic wrap; plastic bags for packaging; pamphlets in the field of financial services; printed periodicals in the field of financial services; printed matters, namely, paper signs, books, manuals, curriculum, newsletters, informational cards and brochures in the field of financial services; paper articles, namely, written articles in the field of financial services; printed materials for advertising and promotional purposes, namely, printed advertising boards of paper and cardboard; paper banners; signs for advertising and display purposes, namely, printed advertising boards of paper and cardboard, paper display boxes, and display cards primarily composed of cardboard; stationery; forms, namely, blank forms, business forms, and order forms; writing pads; office requisites in the nature of pens; pencils, pens, and pencil holders in International Class 16; and
Banking; credit card services; financial evaluation, namely, financial evaluation for insurance purposes; exchanging money; financing services; investments, namely, investment brokerage, investment management, investment of funds of others; insurance, namely, insurance agency and brokerage, insurance administration, insurance claims processing; guarantees, namely, cheque guarantee card services, financial guarantee and surety services; cheque verification; issuing travelers cheques in International Class 36.

Example #2

SPANISH BREAKFAST (stylized). Reg. No. 4290593. 66(a) registration. Organización Interprofesional del Aceitede Oliva Español. Class 16, 29, 35.

Audit Office Action requesting samples of use for “postage stamps” and “pen nibs” in Class 16 and “rental of advertising space” and “services, namely, offering business management assistance in the establishment and operation of olive oil sales” in Class 35. Class 29 was not audited; the Section 8 & 15 filing already included a specimen for the sole product in that class, olive oil. The Office Action Response deleted all the audited goods and services, and quite a bit more. Of the 229 words in the ID for which a Section 8 & 15 were filed, only 59 words survived the audit process.

Books, publications, periodicals, magazines, catalogs, prospectuses, and printed matter all in the field of promoting the consumption of olive oil; newspapers; printed forms; calendars; printed tickets, posters, notebooks, note cards, envelopes and writing paper, letter trays, wrapping paper; printed matter, namely, brochures in the field of promoting the consumption of olive oil; bookbinding material; photographs, pictures, chromolithographs, paper labels; postage stamps; graphic art reproductions and representations; stationery; pen nibs, ball-point pens, pencils; adhesives for stationery or household purposes; instructional and teaching materials in the field of promoting the consumption of olive oil; plastic materials for packing, namely, plastic bags for packing; printing type; printing blocks in International Class 16

Wholesale and retail store services featuring olive oil; import and export agencies, advertising services, namely, promoting the goods and services of others; exclusive commercial and sales representation for all kinds of products, namely, promotional marketing and representation services for sale of olive oil; advertising services; dissemination of advertising matter and rental of advertising space; distributing prospectuses, directly or by mail order, and distribution of samples; business services, namely, commercial or industrial company operation or management assistance services; franchise services, namely, offering business management assistance in the establishment and operation of olive oil sales; advisor services and consultation in business management namely, business organization, business estimates, business reports and research in business matters, market studies, business information agency and import and export agencies in International Class 35

Example #3

DISNEY JUNIOR (stylized). Reg. No. 4094327. 1(a) registration. Class 41.

Audit Office Action requesting samples of use for “production, presentation, distribution of television programs” and “on-line entertainment services, namely, providing on-line computer games.” The Office Action Response provided several additional specimens for each. No services were deleted.

Example #4

ILLINOIS INDUSTRIAL TOOL. Reg. No. 3605472. 1(a) registration. Class 6, 7, 8, 9, 17, 22.

Audit Office Action requesting samples of use requesting use for a pair of goods in each class. The Office Action Response included a declaration from an executive and photos of each audited product; no goods were deleted.

The practical impact of Examination Guide 1-20 so far.

After quite a lot of complaints from the trademark bar, the USPTO issued revised Examination Guide 1-20 on Feb. 15, 2020 — the day it became effective. The updates primarily related to the email requirements for represented applicants, but the Exam Guide itself is much broader. This blog post breaks down the categories in the Exam Guide and, probably more helpfully, describes the first handful of Office Actions that point to the Exam Guide to get a feel for how the Office is actually going to use it.

E-Filing Requirements and Application Requirements

Between Sections I and IV of the Guide, e-filing is now generally mandatory. But, a handful of exceptions where paper submissions are acceptable. These requirements have generated zero Office Actions so far – we’ll have to wait for the first major TEAS implosion to see the practical impact.

Correspondence

Much ink has been spilled over the email address requirements, and we won’t belabor the point here – the Office has not yet issued any Office Actions addressing the email portion of the Guide.

Specimens

The Guide formalizes some existing trends, tightening up examination of certain types of specimens in use claims.

  • Requires labels or tags to be physically attached to the goods or to show “actual use in commerce” via informative information like UPC bar codes or lists of contents.
  • Requires more information about the URL submitted for web page specimens. The Office hasn’t quite caught up to the idea of non-static URLs, but oh well.
  • Emphasizes that mockups and digitally created illustrations and the like are inadquate.

All of the Office Actions issued so far that refer to Exam Guide 1-20 relate to specimen issues.

  • Class 7: 1 (OA: refused specimen as referring to sensor technology integrated into a pump rather than a pump)
  • Class 9/42: 1 (OA: web portion of specimen was missing URL/date)
  • Class 21: 1 (OA: web portion of specimen was missing URL/date)
  • Class 25: 3 (1: OA: specimen was tag or label unattached to the goods; 2: OA: specimen was tag or label unattached to the goods; 3: OA: specimen was tag or label unattached to the goods)
  • Class 10/41: 1 (OA: specimen in the service class did not include date)
  • Class 20/40: 2 (same mark for each; OA: specimen had screenshot of website but did not show mark on product, plus URL/date issue)

At least so far, it’s really just two problems cropping up: the lack of a date on website screenshots, and free-floating labels with no connection to the product. The label issue has always been dumb, and was exploited for years by unknowing or less scrupulous applicants. It’s a great fix.

The web-based specimen changes are a mixed bag. The URL requirement is along the right lines, in that it attempts to differentiate “live” sites from mock-ups. It could be better – it makes no attempt to differentiate between public and “gated” sites that are not publicly accessible, which would get at the “use” issue better, and makes no allowances for non-static URLs, which impacts the ability of Examiners to check on the claimed use. The date requirement is a bit more problematic – most browsers do not show date information on-screen, and many websites print to PDF very poorly, so adding a date requires some third-party software or extra steps.

We will continue to watch as the use of Exam Guide 1-20 evolves, and especially as the Office stats examining the email issue.

The Rise of IP Clinics

The USPTO runs a program to allow law school clinics to engage in practice before the Office. It provides law students great practice experience while they are still in law school, and is generally acclaimed as a great success. The Office most recently expanded the roster of IP clinics in 2016-2017, adding twenty law schools in mid-2008. The program also provides for expedited examination, so students can both file and handle and prosecution issues in a single academic semester or quarter.

The Office prepared a 2016 report on clinic activity from 2009-2016. Over those seven years, 2,000 trademark applications were filed by clinics as counsel, and 2,700 students were involved in clinics (both trademark and patent work). The

At TM TKO, we have been getting our set of law clinic users (it’s free for clinical / academic use!) ready for the semester, and the clinic program has been on our mind. So, we ran some updated numbers. These numbers are not going to match the USPTO’s figures from the clinics’ biannual reporting requirements. We do not have access to that data. Instead, our estimates based on the use of email addresses listed in the USPTO’s clinic list. Some clinics will use other emails for their USPTO communications, and our search methodology will not pull in those results. So, don’t get too hung up on specific numbers — this data only shows general trends.

The number of clinic-based filings per year have continued to rise, from the 400-500 range to over 650 last year. Much of that rise appears to be due to the expanded roster of active clinics. There is also a pretty wide range of trademarks being handled, from just a couple per year for some clinics to fifty or more for a couple of very ambitious (and busy) clinics. We don’t have student numbers for each clinic, so it’s impossible to say whether these are just more heavily attended or doing more filings per student.

IP Clinics are providing students valuable opportunities to understand the nuts and bolts of trademark practice and to build client relationship management skills. Both are crucial in running an active IP practice, and the USPTO’s clinical programs are giving today’s law students a great head start on practice that was not available ten years ago.

Participating Law Schools201920182017
American University, Washington College of Law954
Arizona State University Sandra Day O’Conner College of Law614642
Baylor Law School5128
Boston College Law School748
California Western School of Law171617
Fordham University School of Law340
Howard Universtity000
Indiana University Maurer School of Law212412
Indiana University McKinney School of Law001
Lewis & Clark Law School131714
Liberty University School of Law100
Lincoln Law School of San Jose000
New York Law School6100
North Carolina Central University School of Law1268
Northeastern University School of Law1034
Northwestern Pritzker School of Law312122
Roger Williams University School of Law201
Rutgers Law School323
Seattle University School of Law1228
South Texas College of Law Houston262923
Southern Methodist University Dedman School of Law15310
Southern University Law Center310
Suffolk University Law School21015
Syracuse University College of Law71013
Texas A&M University School of Law954
The George Washington University School of Law894
Thomas Jefferson School of Law71613
Tulane University Law School522
UIC John Marshall Law School81314
UNH Franklin Pierce School of Law201313
University of Akron School of Law000
University of Arizona, James E. Rogers College of Law21108
University of California, Irvine School of Law500
University of Connecticut School of Law171521
University of Detroit Mercy School of Law000
University of Idaho College of Law514
University of Maryland School of Law544025
University of Miami School of Law1972
University of Nebraska College of Law1978
University of North Carolina at Chapel Hill School of Law16105
University of Notre Dame Law School13136
University of Pennsylvania Law School2050
University of Puerto Rico School of Law001
University of Richmond School of Law192716
University of San Diego School of Law171516
University of San Francisco School of Law335626
University of St. Thomas School of Law28101
University of Tennesee College of Law141016
University of Washington School of Law6215
Vanderbilt Law School201412
Western New England University School of Law334
Total652528449

TM TKO: 2020 Trademark Economic & Practice Forecast

TM TKO is compiling data on trademark lawyers’ expectations for the new year. We would love to have your feedback! Topics include the economy and the trademark bar, practice challenges, USPTO performance, and more. All data will be used only in aggregate form, and published for the benefit of the trademark community; your individual response will not be used in any way.

To take the survey, go here.

Your feedback and insights will be shared with the trademark community. Make sure to visit TM TKO’s blog to see the results later this month.

Business Entity Listing data added to Knockout Results

TM TKO is excited to incorporate business entity data into our clearance search reports! To read about how to access this data via our manual search tools, check out our previous post.

Business entity data is presented in its own section of your report. It takes into account entity name and NAICS/SIC codes (translated to international class data) and presents relevant results. Many of the business entities have additional information from third-party sources, like website data, employee info, and more. This business entity information tends to be focused on entities that have a physical location.

Screenshot showing the new business entity data in a search report

You can export business entity data separately from or together with trademark record data to Word or Excel, and export either the full report or just the tagged records.

Updated knockout search export interface

Business entity data is on by default for all new knockout searches, but can be turned off via a checkbox.

We hope you enjoy the new data and additional functionality in our clearance reports!

Safeguard Your Attorney Information with TM TKO

The USPTO recently issued an alert that is very important for trademark attorneys: some foreign applicants are attempting to skirt the bar on non-US applicants and lawyers prosecuting US applications by listing a US lawyer as correspondent, but where the US lawyer actually has nothing to do with the application.

This kind of fraud could impact your practice and reputation. Fortunately, with TM TKO’s Portfolio feature, it’s easy to get notified any time your name is used fraudulently. Anyone using your name fraudulently will want to get notice of USPTO correspondence, so they will use their own email address instead of an email address from your firm.

Click on Portfolios then New Portfolios, and stay in the “Attorney” tab. Give this Portfolio a name, like “Attorney Fraud.” If you are a one-person practice or only checking yourself, add two rules: one for your name as Attorney of Record, and one for the Correspondent Email. Leave only the top three checkboxes selected, as shown below.

If you are tracking your whole firm’s trademark practitioner, you will want want to have a Group of rules for the Attorney Names. Be sure to set the Boolean for that group to “or” and leave only the top three checkboxes selected, as shown below.

You will now be updated once a week, and get prompt knowledge of any fraudulent use of your name.

If you have any questions about setting up this Portfolio, or any other ways to use TM TKO to support your practice, don’t hesitate to reach out at support@tmtko.com.

Tracking an Industry – Real Estate

Trademark filings can be an interesting lens to look at an entire industry. Today, we’ll look at real estate. It had a huge rise in the 2000s as housing prices boomed, then the subprime mortgage crisis hit the industry hard from 2007 – 2010.

Trademark filing trends track the rise, fall, and slow return of the industry surprisingly well. I looked at 4 main classes – Class 9 (apps), 35 (), 36 (), and 42 (hosted software). Filing trends for each largely match up, although Class 36 is both the most common class for applications and has seen the most proportionate growth in the post-2013 rebound.

The filing uptick before 2007 is clear, and followed by the sharp, recession-induced tail that we would expect. Filings were static though 2013, and started to rebound. Class 9 and 42 (apps and websites) are the least common, which may make sense given the additional technological investment required. Class 35 (real estate sales and marketing services) were more common, and Class 36 (listing and brokerage services) by far the most.

It’s not quite clear why Class 36 applications have spiked more than other classes over the last three years. I suspected that it might be a rise in foreign applicants, especially from China, but that is not a meaningful factor.

It is interesting that trademark filings have jumped more than actual US home sales – sales dropped from more than 7 million in 2005 to a low of 4.1 million in 2008 and 2010; sales have only rebounded to around 5.5 million per year in 2017-2018.

TM TKO launches new Office Action Analytics and Search Upgrades

TM TKO’s new Office Action analytics let you prepare smarter, better Office Action responses in less time. Our tools do the complex research for you, instantaneously. See a full example of the kind of Office Action analytics that TM TKO provides, or try it now from your Tools menu.

Issue-driven analysis: instantly provides you successful responses for similar marks for similar products or services to help you build on the successes of others. Pull any TSDR document in formatted PDF or plain-text format.

Examiner details: compare your Examining Attorney’s allowance rates on this issue with others in that Law Office and at the USPTO overall, and see recent successful responses for your issue and your Examiner.

Citation histories: do deep dives into citation histories at a click. It’s easy to understand complex webs of co-existence, assess your own chances of success, and see how the cited prior filings have interacted with other applications.

ThorCheck

Office Action analysis integrates with ThorCheck, TM TKO’s ground-breaking comparative research tool based on a precedential TTAB opinion, to find examples of co-existence of the same mark for two sets of goods with different owners. This evidence helps you push back against likelihood of confusion claims. You can also use ThorCheck to provide confusion evidence as the senior party in a Letter of Protest or opposition.

Search Upgrades

Office Action and prosecution data is now integrated across our platform.

Results in knockout search, manual search, and watch results all feature easily accessible citation data, full TSDR file histories with Office Actions and Responses tagged by issue, and quick links to prosecution analysis. Just click on the magnifying glass icon for a wealth of research options.

Spring Training – Baseball Brands

Here in Nashville, we’re starting to get occasional warm days (and even more occasional dry days), and spring training baseball has arrived with the warmer weather. Our local AAA team, the Nashville Sounds, has a beautiful stadium right next to downtown, and we can’t wait for the season to start.

In honor of the boys of summer, this blog post looks at the key term in team names, and how popular they are as marks not for pro baseball teams. The research looked at singular and plural forms, which probably overcounted Reds and Nationals a bit, but at least this permitted consistent methodology. The Google Books N-gram research doesn’t try to exclude baseball content in the same way, so marks like RED SOX aren’t screen for non-baseball use in the same way.

Twins, Angels, and Nationals were much more common than the median in both lists, with Rays, Athletics, Tigers, Rangers, Pirates, Reds, and Giants substantially above the median on both lists, too. The terms that had the least salience in more general brand use and Google N-gram book usage were Orioles, the two colored Sox, Astros, and Diamondbacks, with Phillies, Marlins, Dodgers, Padres, and Rockies all lower than the median on both, but less dramatically so.

Braves and Brewers were a good bit more common on the brand side than n-grams, and Cubs and Cardinals were the only terms that were noticeably more common from an n-gram perspective (versus the median) than as brands.

The raw data:

Team Live
Non-Team
Live
vs median
N-gram N-gram

vs median

Orioles 3 1% 0.00004 35%
Red Sox 1* 0% 0.00012 100%
Yankees 144 72% 0.00034 274%
Blue Jays 24 12% 0.00002 14%
Rays 665 331% 0.00138 1,113%
White Sox 0 0% 0.00004 34%
Tigers 1260 627% 0.00032 258%
Royals 3288 1,636% 0.00006 48%
Twins 2366 1,117% 0.00081 653%
Angels 4516 2,247% 0.00028 199%
Athletics 1313 653% 0.00025 202%
Mariners 143 71% 0.00025 102%
Rangers 867 431% 0.00029 230%
Astros 58 29% 0.00002 15%
Braves 611 304% 0.00012 97%
Nationals 17885 8,898% 0.00037 298%
Mets 201 100% 0.00008 65%
Phillies 10 5% 0.00005 40%
Marlins 138 69% 0.00002 12%
Brewers 1156 575% 0.00007 56%
Cubs 146 71% 0.00018 145%
Reds 5489 2,731% 0.00022 177%
Pirates 475 236% 0.00045 363%
Cardinals 203 101% 0.00022 177%
Dodgers 20 10% 0.00011 89%
Padres 28 14% 0.00005 40%
Giants 878 437% 0.00056 452%
Rockies 62 31% 0.00010 81%
Diamondbacks 60 30% 0.00001 6%

 

 

Tapping the Power of Office Action Search

The vast majority of “law” created in the trademark space is made via ex parte examination by the US Patent & Trademark Office. There have been over nine million Office Actions and Responses sent to and from the USPTO and trademark professionals, compared to only some 850 citable and 11,600 non-citable decisions from the Trademark Trial and Appeal Board, and a similarly small number of federal and state cases.

This June, TM TKO is revealing tools that will let you tap this huge body of Office Actions and responses. This series of blog posts will explore situations where the power of Office Action search can help you be a better lawyer.

Let’s consider a situation where your client, a craft brewery, has applied for the shape of a tap handle that it plans to use in bars. The design consists of a five-pointed star. The Examining Attorney has refused the mark as ornamental. How do you move forward?

Currently, you’re limited to poking around on TSDR in the hopes that you run across an application that raised a similar issue. With TM TKO, you can skip all the guesswork and focus right in on the most relevant prior Office Actions, and identify model responses. You can even limit the results to applications that eventually moved on to publication, indicating that they overcame the issues raised by the Examining Attorney.

OAbeertap
OAIssue1
OAPubOnly1
Here’s what we see – a set of results focused on exactly the sort of issue your client faces.

OAResults1

The first result is the prosecution history for the following tap design:

Tap1

In an Office Action issued in 2011, the USPTO preliminarily refused registration on the grounds that hexagonal designs were common or basic in the industry, and thus likely to be perceived as ornamental or otherwise non-distinctive. Counsel for the applicant, Charles Bacall of Verrill Dana, LLP, submitted a lengthy response arguing both that the design is inherently distinctive, differentiating it from the evidence provided by the Examining Attorney, and arguing in the alternative that the mark has acquired distinctiveness based on considerable sales figures and supporting affidavits from industry experts. It’s a perfect model to start thinking about and planning a response to your client’s Office Action. Despite the excellent arguments, the Examining Attorney would not yield, and the mark was registered on the Supplemental Register – also a useful data point in advising your client about the chances of success and the best path forward. A 2(f) claim was accepted in a subsequent filing for the same mark, and the mark is now protected on the Principal Register, Reg. No. 4,872,679.

Today, not only does the tap handle design a registered trademark that helps drinkers identify Allagash Brewing Company beers from across a bar, the company even sells tap handles from its online company store. You can buy one for your home pub at https://shop.allagash.com/collections/tap-handles.

TapHandles

Over the coming days, we will continue to explore more situations where Office Action and Office Action Response searches can help you do your best work for your trademark clients.

What Didn’t Work: Unsuccessful UDRP Complaints in 2016

This article analyzes UDRP decisions in favor of the respondent domain owner in 2016. What factors sunk complainants and what fact patterns favored respondents?

Data set

The data was manually coded from the National Arbitration Forum (“NAF”) searchable case database, and taken from the aggregate reporting provided by the World Intellectual Property Organization (“WIPO”).

Both organizations have strikingly similar outcomes: roughly 90% of complaints succeeded in UDRP claims. Of those, a bit more than two percent of the WIPO decisions took the baffling step of canceling the domain name instead of seeking its transfer, putting the domains back in the general registration pool, where the complainant has no better chance than anyone else of getting the domain name. The one strategic reason to file for cancellation may be where the domain name included marks from both the complainant and a third party, where the complainant may not be able to secure transfer.

Outcome summaries are presented below in a table and as a pie chart.

  NAF WIPO
Outcome Cases Percentage Cases Percentage
Cancellation 3 0.20% 51 2.16%
Transfer 1300 87.72% 2133 90.23%
Denied 179 12.08% 179 7.57%
Total 1482 100% 2363 100%

 

NAF.png WIPO.png

Since the overall outcomes are so similar and time is not unlimited, we focused only on NAF results for a more detailed breakdown.

Trends

We analyzed each victory for a respondent based on the grounds cited by the UDRP panel. Many decisions had more than one ground cited, so the total count of issues exceeded the raw number of decisions. There were some clear patterns in the results, reviewed below.

Losses

The Complainant Lost a Prior UDRP or Court Proceeding

Complainants always lost where there was res judicata applied. It would seem self-evident that a prior loss in a UDRP proceeding or domain-related litigation would preclude winning a UDRP in the future, since the UDRP is primarily focused on the rights of the complainant and conduct of the respondent at the time of registration. Several complainants tried anyway and predictably failed.

The Complainant Does Not Have Priority

This was the second clear loser for complainants and was much more common than res judicata. Even though the UDRP requires evidence of bad faith registration and use to prevail, about 25% of the losing complainants filed complaints where the domain owner acquired the domain name in question before the complainant had trademark rights. UDRP decisions uniformly hold that registration in these circumstances cannot be in bad faith (even if use can) and also generally hold that the respondent has rights or legitimate interests in the domain name.

The typical fact pattern involved the complainant trying to capture the .com domain name corresponding to the mark where the domain name was registered before the complainant adopted or first sought to register its mark. The complainants quite reasonably want to get the domain name, often attempting (unsuccessfully) to purchase it from the owner, and then quite unreasonably used a UDRP proceeding to attempt to get their hands on it. Of course, the registration could not have been in “bad faith” where the complainant had no rights at the time of registration! This fact pattern is most likely to lead not only to a quick and firm rejection of the complainant’s claims, but also to a “reverse domain name hijacking” finding by the UDRP panel.

Where the domain name was registered prior to the complainant’s first trademark rights, but has been used in bad faith since (e.g. for pay-per-click ads for competitive goods or the like), the UDRP is just not the right tool. Complainants would have a perfectly good ACPA claim on the same facts. Whether these complainants were unaware of the differences in the claim or simply wanted to avoid the cost of federal court litigation is not clear, but filing a lawsuit isn’t wildly more expensive than filing a UDRP, and it’s easy to leverage a clearly winning ACPA claim into a quick settlement, where filing a clear-loser UDRP complaint is little better than burning money.

The Complainant Did Not Adequately Pleading (or Did Not Have) Common-Law Rights

Poorly-supported claims of common-law rights were another common loser, totaling roughly 20% of the UDRP losses by complainants. The typical fact pattern was a small or new business, or an individual claiming trademark rights in their name – often filing the complaint without a representative – filing a complaint that provided little more than a business name registration or a Facebook page as evidence of common-law rights. Many of these complaints, like those in the “priority” section above, sought to take high-value domain names, often those consisting solely of a combination of generic terms. To be clear, common-law claims in general were not problematic for complainants: common-law complaints backed by significant evidence of sales, advertising expenditures, and public recognition like press coverage had no more issues than registration-based complaints in providing rights under 4(a)(i).

The Complaint Targeted a Criticism Site

Complainants have largely figured out that the UDRP is not a great tool for trying to shut down critical sites that are not actively trying to confuse visitors. While complainants occasionally prevail – there is a bit of a split in the UDRP case law on the point – 5% of losses still related to criticism sites.

The Complaint Used the UDRP to Address a Business Dispute

About 15% of disputes failed because they fell outside the scope of the UDRP. Most were situations where the parties had some relationship, e.g. a former employee or officer of the complainant registered the domain name in their name while working for the complainant, and the complainant tried to use a UDRP claim to get it back. Panels tend to reject these claims as fundamentally contract or agency questions rather than questions within the scope of the UDRP.

The Complaint Addressed a Reseller

About 5% of the failed claims related to resellers, where the panel found that, between the nature of the domain name and the site, the registrant was attempting to operate a legitimate and non-confusing resale operation.

Other issues

About 10% of complaints also foundered on the “rights or legitimate interests” inquiry (largely cases where the complainant ran a site that was not competitive with the trademark owner’s business) or “bad faith” inquiry (generally where an offer to sell in response to a purchase inquiry from the domain owner was used as the sole proof of bad faith, and wasn’t enough, by itself, to show the registrant’s initial bad intent). Five of these involved successful claims that the registrant simply registered generic English terms that happened to match the complainant’s trademark, which was a generic English term for some goods but was used for unrelated goods. These defenses were most successful when the respondent had a huge portfolio of such domains, and didn’t appear to be targeting the complainant’s business (or the marks of other brand owners) in other ways. Interestingly, the respondent prevailed in a couple of proceedings even though an automated pay-per-click ad service put up ads competitive with the complainant; the panels refused to impute bad faith registration even though there was evidence of bad faith use. Those decisions were a bit of a departure from the norm.

A handful of proceedings were lost on other formalities grounds, most often where a complaint related to a domain name that included the marks of two companies, only one of whom was a party to the proceeding.

Conclusion

We hope this was a useful double-check for UDRP complainants prior to filing, and a useful guide to analyzing potential claim weaknesses for respondents in domain name dispute proceedings.

Charities’ Trademark Filings

Like any other venture, charities have trademark rights. Charities’ names and logos are important assets, and consumer confusion (especially donation-related scams) can be a significant problem for many charities. With that in mind, we took a look at how the twenty-five largest charities in the US treat their trademark portfolios.

There is as much variation in the charities’ trademark protection strategies as there is in the organizations’ charitable missions. Some, like the United Way, St. Jude, and Cru, are very active applicants with numerous trademark registrations and pending applications; others, like the Task Force for Global Health and the Patient Access Network Foundation, have little to no registry presence. There were no obvious correlations between trademark filing decisions and the nature of the charity, its geographic focus, or its religious affiliation or lack thereof.

The graph below is normalized: blue shows the charity’s revenue, red total US trademark filings, and yellow 2016 trademark filings.

CharitiesRevenueFilings.png

For the curious, the non-normalized data follows: it includes not only the three categories charted above but also the “expense ratio” from CharityNavigator.org — the percentage of revenue spent on the stated charitable goal, at least for those organizations required to publicly report that data. CharityNavigator.org has many additional metrics that normalize expense ratios across different types of organizations, which may necessitate very different cost structures.

Organization Revenue Active 2016 Expense Ratio
United Way Worldwide $3,708.00 174 16 91.60%
Task Force for Global Health $3,154 0 0 not rated
Feeding America $2,150 49 3 98.50%
Salvation Army $1,904 77 2 not rated
YMCA of the USA $1,202 74 1 not rated
St. Jude Children’s Research Hospital $1,181 210 14 69.20%
Food for the Poor $1,156 7 0 95.70%
Boys & Girls Clubs of America $923 32 0 81.80%
Catholic Charities USA $921 2 0 78.20%
Goodwill Industries International $902 82 7 not rated
Habitat for Humanity International $829 40 1 81.90%
World Vision $825 40 2 83.90%
American Cancer Society $810 79 6 59.90%
Patient Access Network Foundation $801 1 0 not rated
Compassion International $799 22 2 83.10%
Direct Relief $775 5 0 99.20%
Americares Foundation $740 32 2 97.90%
Lutheran Services in America $723 7 1 not rated
Nature Conservancy $646 35 4 71.20%
American Heart Association $634 97 11 78.70%
American National Red Cross $624 46 0 90.10%
Samaritan’s Purse $565 19 0 88.30%
MAP International $545 15 0 99.20%
Step Up for Students $521 0 0 98.90%
Cru $514 217 6 not rated