Comments

• smlevy42 07:44 am 12-Jan-2015 I find it interesting that the Panelist in this case made no mention of the USPTO’s initial refusal of the Complainant's trademark application claiming that it's merely descriptive of its services. The Complainant has responded to the refusal and the matter is now pending with the USPTO. This raises the question of whether the Complainant volunteered that information or whether it should be the duty of a UDRP Panel to investigate such matters on its own (likely not, given the limited scope of the Policy). Regardless, I do feel that a more detailed discussion concerning the distinctiveness of Complainant’s mark was warranted here to support the Panel’s finding of trademark rights. When a UDRP complainant’s mark is borderline descriptive (and especially where it’s been rejected by a trademark office as such), it’s either premature to declare that trademark rights exist or, if not, it seems prudent to support such a finding with a more in-depth description of the evidence. At this point the USPTO Examining Attorney will consider the Complainant’s response to the office action and its submitted proof of acquired distinctiveness. If it finds that the Complainant has fallen short in this regard, then we will have the awkward situation where a UDRP Panel found the existence of trademark rights but a trademark office will have found that no such rights exist. In any event, it is well accepted that the UDRP is a tool with a rather limited focus. As such, I fee it would be appropriate to either deny, without prejudice< a case involving a borderline descriptive mark or to at least support a transfer order with a detailed discussion of the evidence.