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UDRP procedure and TMs registered on US Supplemental Register

August 4, 2017

In two recent UDRP rulings, panels have held that trademark registrations on the Supplemental Register are not sufficient to prove trademark rights.

In order to succeed in a Uniform Domain Name Dispute Resolution Policy (UDRP) procedure, the complainant must prove that the disputed domain name is identical or confusingly similar to a trademark to which the complainant has rights.

However, the UDRP does not specify which kind of trademark rights are necessary. Procedures may therefore be based on registered trademarks or use based trademark rights.

However, in two rulings handed down on 18 July 2017 (see below), panels ruled that Supplemental trademark registrations for “1-800-janitor” and “1-800-cleaning” are not sufficient to establish the Complainant’s trademark rights without providing further evidence to prove that the marks in question have acquired a secondary meaning.

The Supplemental Register is the United States Patent and Trademark Office’s secondary trademark register. It enables registration of trademarks which lack the distinctive requirements necessary for registration on the principal register but does not provide the same protection accorded to trademarks registered on the U.S. Principal Trademark Register.

Secondary meaning arises when consumers have come to identify a non-distinctive trademark with a certain product over time and therefore enable registration through acquired distinctiveness.

Theses ruling are in line with WIPO Overview 3.0, Section 1.2.2.

The message is clear. Complainants who file UDRP complaints on the basis of supplemental trademark registrations, must be able to provide supplementary evidence of common law rights or trademark registrations in another jurisdiction to avoid having their complaints denied.

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