Pseudo-marks

[Theo]

What is the impact that pseudo-marks might have on UDRPs?

E.g. when an application for the mark "URGR8" at the USPTO has been given (example) the pseudo-mark "You are great", can the applicant claim rights to YouAreGreat.com instead of URGR8.com ?

 

[ohkus]

People can claim whatever they want.....will they win, depends on the panel. A lot of factors can go into it. Try not to worry about these things until they happen and then fight it if it is important enough to you.

 

[Theo]

I didn't ask for a philosophical approach to UDRP.

 

[jberryhill]

'Pseudo mark' designations are assigned by the USPTO as search aids for phonetic similarity, telescoped words, etc.

Whether an equivalent "commercial perception" would be created by use of a pseudo-mark instead of the mark is a question of fact, and not based on any sort of "presumption" afforded by the USPTO designation as such.

 

[ohkus]

John....while I'm no lawyer and would never challenge your legal expertise maybe you can explain this UDRP then:

http://www.adrforum.com/domains/decisions/94994.htm

I know that the defendant didn't dispute the domain but I find the findings interesting:

The Complainant (formerly known as Monetary Management Corporation) provides consumers with small "payday loans", using the mark CASH ‘TIL PAYDAY. This mark is registered with the United States Patent and Trademark Office (registration 07/16/1996; No. 1,987,764). The trademark is registered under the Pseudo Mark CASH UNTIL PAY DAY. The Complainant uses the domain name <cashtilpayday.com> to market its services on the Internet.

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

Sorry forgot to post this:



Identical and/or Confusingly Similar

The Complainant has rights in the marks CASH TIL PAYDAY and CASH UNTIL PAY DAY. The Respondent’s domain name is identical to the Complainant’s pseudo mark, except for the addition of the domain name level designation "com". When potential clients seek the Complainant’s services on the Internet, the Complainant’s pseudo mark is one of the first domain names entered. This association is vital in maintaining a business in today’s e-commerce society.

 

[Theo]

Auraka, exactly my point. I was wondering how/if a pseudo-mark can be used as part of a UDRP claim. Since it's a phonetic transliteration of an actual mark, what effect does it have in determining "bad faith" etc.

 

[ohkus]

Acro,

This is what I was trying to tell you in my first reply. John says it doesn't matter but in this UDRP we see the arbitrator seem to claim that a pseudo mark is an extension of the actual trademark to which a person has rights. In the end it all depends on the arbitrator and the name, it wasn't a philosophical answer but a realistic one.

Hopefully John can take some more time out of his busy schedule and give us his thoughts on that case.

Happy Day

 

[Theo]

Auraka, your first response was "don't worry until it happens". I like being pro-active.

I am interested in acquiring a domain that a tm has been applied for, but the .com is identical to the pseudo-mark, NOT the tm mark.

 

[ohkus]

Auraka, your first response was "don't worry until it happens". I like being pro-active.

I am interested in acquiring a domain that a tm has been applied for, but the .com is identical to the pseudo-mark, NOT the tm mark.

I'm sorry you can't read between the lines so I'll try to spell it out for you. No lawyer can give you a guarantee that you won't lose this domain via UDRP. As you can see via the case I referenced UDRP arbitrators can always interpret things differently (look at the other case regarding this complainant).

So in the end after reading hundreds of UDRP cases what I was trying to say to you is people can file a UDRP for anything. Pseudo-Marks can definitely give credence to a UDRP case but if they will actually hold up in court is a different thing (as John pointed out).

I haven't seen a case where a pseudo-mark has been tested in a court of law but hopefully John can educate us. I always look forward to legal advice from a properly trained legal professional.

 

[jberryhill]

The Complainant has rights in the marks CASH TIL PAYDAY and CASH UNTIL PAY DAY. The Respondent’s domain name is identical to the Complainant’s pseudo mark, except for the addition of the domain name level designation "com". When potential clients seek the Complainant’s services on the Internet, the Complainant’s pseudo mark is one of the first domain names entered.

Why am I not surprised that is a Carolyn Marks Johnson UDRP decision...

She's a retired federal judge from Texas who in the course of her many UDRP decisions has demonstrated an extremely poor grasp of trademark law. A Virginia court called her decision in the freebies.com case "without basis in fact or law".

Here's the thing - a trademark registration confers presumptive rights in the mark registered.

The UDRP refers to "identical or confusingly similar", and that's why I said above:

Whether an equivalent "commercial perception" would be created by use of a pseudo-mark instead of the mark is a question of fact, and not based on any sort of "presumption" afforded by the USPTO designation as such.

So the question isn't whether there are "rights" in the pseudo-mark designation - there aren't. But the question is really whether the domain name is confusingly similar to the mark. If the domain name is identical to the pseudo-mark designation then, yes, it probably is confusingly similar to the mark. But that's not because there is any sort of "magic" in additional search terms that the USPTO might use as tags on a TM record - which is all a pseudo mark designation is.

The bottom line is that I wouldn't get hung up on the pseudo mark designation so much as the larger question of whether the domain name is confusingly similar to the mark, how the domain name is being used, etc.

Where Judge Johnson runs off the rails is here:

The Complainant has rights in the marks CASH TIL PAYDAY and CASH UNTIL PAY DAY.

No. The Complainant has a right in "CASH TIL PAYDAY". The analysis should have then gone to whether "CASH UNTIL PAYDAY" is confusingly similar to the mark in which the Complainant has rights.

But, seriously, she's one of the only UDRP panelists to have been expressly singled out by a federal court as being incompetent.

 

[dvdrip]

NAF is by far more corrupted than WIPO.
I see that Carolyn Marks Johnson is still a panelist at NAF.
WIPO has a much better list of panelists. Not perfect but a lot better.