1.2 Establishing Secondary Meaning
Secondary meaning is acquired when in the minds of the public, the primary significance of a product feature is to identify the source of the product rather than the product itself. Direct evidence of secondary meaning includes: (a) direct consumer testimony, and (b) consumer surveys. Circumstantial evidence of secondary meaning includes: (c) exclusivity, length, and manner of use, (d) amount and manner of advertising, and (e) amount of sales and number of customers.
The fact that a Respondent targeted Complainant’s mark per se is insufficient to establish secondary meaning in the absence of other evidence.
Additional Information
Relevant Decisions
Optimal Processing, LLC d/b/a Lund Racing v. alfredo melendrez / speedline motorsports, Forum FA2501002134002 <lawnracing. com>, Denied
In reviewing Complainant’s evidence, it offers little supporting documentation for its conclusory claims of secondary meaning. Although Complainant evidenced its social media presence, the Panel visited Complainant’s Facebook and Instagram pages only to see the posts on its social media mainly do not feature the LUND RACING mark but appear to be a series of pictures of drag race and muscle cars with descriptions about how Complainant has a team that builds aftermarket mustang sports cars for itself and others.
Invest St. Louis LLC v. Femby Femby, CAC-UDRP-106459 (2024), <investinstlouis.com>, Transfer
The Complainant has established or declared that:
-it has used the Signs for more than 10 years, notably on its website formerly linked to the disputed domain name and on social media;
-it has closed more than $250M worth of real estate transactions over the course of its operations under its company name “Invest St. Louis LLC”;
-it has also advertised its services under the Signs through third-party websites;
its website that was linked to the disputed domain name used to receive regular traffic.
Based on the above, the Panel finds that the Signs, although being comprised of descriptive terms which are not inherently distinctive, probably have become distinctive identifiers which consumers in Saint-Louis can associate with the Complainant’s real estate business. The fact that secondary meaning may only exist in a particular geographical area or market niche does not preclude the Complainant from establishing trademark rights (and as a result, standing) under the UDRP (see section 1.3 WIPO Overview 3.0).
Smartkoin, OPC v. Simong Kingsly, WIPO D2024-0362, <bsss-ph.com> and <smartk0in.net>, Denied
The evidence presented provides the Panel with no information regarding public recognition of the Complainant and its relied upon trademarks. Taking all of this as a whole the Panel concludes there is no evidence to show that the terms SMARTKOIN and BSS-PH.COM have become “a distinctive identifier which consumers associate with the complainant’s goods and/or services… In addition, the Complainant’s argument is circular – if accepted it would mean any email fraud of this nature automatically results in the term in question being held to be a trademark – that is not necessarily the case. Whilst a domain name can often be a trademark, that still needs to be proved by appropriate evidence – which the Complainant has failed to do here,
Family Policy Foundation v. John Skinner, WIPO D2024-0098, <familypolicyfoundation.org>, Denied, 3-member
Complainant also submits that per WIPO Overview 3.0, section 1.3, the fact of Respondent targeting Complainant (which is clear based on usage of “Family Policy Foundation” in the Domain Name and on Respondent’s website) supports Complainant’s assertion that its mark has achieved significance as a source identifier. That same section, however, notes that the strength of the claimed mark remains a relevant consideration. The Panel also observes that WIPO Overview 3.0, section 1.15, suggests that the website content is usually disregarded under the first element, and that where it is taken into account, this would be to confirm confusing similarity where a trademark is being targeted. This case presents a complex and unusual scenario, and while it is clear that Respondent is targeting Complainant, as explained above, it is also the case that Complainant has not established the requisite foundation for purposes of the first element.
OpenBots, Inc. v. Luciano Coelho, Forum, FA2206001999065, <openbots.com>, Denied
Documentation of this registration provided by Complainant makes clear that this registration is on the “Supplemental Register” at the U.S. Patent and Trademark Office (“USPTO”). As set forth in section 1.2.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “Complainants relying on trademark registrations listed solely on the USPTO Supplemental Register are expected to show secondary meaning in order to establish trademark rights under the Policy because under US law a supplemental registration does not by itself provide evidence of distinctiveness to support trademark rights.” However, other than conclusory, unsupported statements (such as, “Complainant has invested significant time and resources in developing and protecting its name and trademark”), Complainant has shown no such secondary meaning.
Elodie Games, Inc. v. Wood Gavin, Forum FA2202001986021, <elodie.game>, 3-member, Transfer
To establish common law rights in a mark, a complainant must prove that the mark has acquired a secondary meaning, which is proven by showing exclusive use of the mark in commerce for a period of time, evidence of advertising and sales, recognition of the mark by customers, unsolicited media attention, or other evidence showing that the relevant consuming public has come to associate the mark with goods or services provided by a single vendor… On the foregoing evidence the Panel has no trouble finding that Complainant has demonstrated its rights in the ELODIE mark for the purposes of Policy ¶ 4(a)(i).
CEMEX UK Operations Ltd. v. Privacy Service Provided by Withheld for Privacy ehf / Cargo Logistics Transportation Services, Cargo Logistics Transportation Services; South Coast Shipping Company, South Coast Shipping Company; and Cargo Logistics, Cargo Logistics Transportation Services, WIPO D2022-1445, <south-coast-company.com>, et., Denied
The Complainant however also relies on the fact of the Respondents’ use of the Disputed Domain Names is itself evidence that relevant unregistered rights exist. WIPO Overview 3.0 addresses this as follows (section 1.3): “The fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used) may support the complainant’s assertion that its mark has achieved significance as a source identifier.” The Panel takes the view that this approach may support a case where there is other evidence which is of a doubtful or marginal nature, but normally it would not constitute the sole evidence of unregistered rights. If that was not the case then the test would be entirely circular and any term used in a domain name could be said to support a finding of unregistered trademark rights – which is clearly not the intention of the Policy.
The Barack Obama Foundation v. michael board / Championshipblackjack, Inc, Forum FA2107001954598, <obamapresidentialcenter.com> et. al., 3-member, Transfer
Complainant contends that former United States President Barack Obama owns common law rights to Complainant’s Marks. This question raises the contentious issue of whether a personal name that has not been registered as a trademark can ever constitute a common law trademark… the consensus view among UDRP panelists is that a complainant may show that his or her personal name has taken on such a cachet that it has become a trademark, but that to succeed in doing so the complainant will have to show that the name has actually been used in trade or commerce.
Caleb Marshall v. c/o Weebly Domains, Forum FA1901001826454, <thefitnessmarshall.com>, Denied
common law rights require proof of secondary meaning. Secondary meaning requires establishing that the public primarily associates the mark in question with certain goods or services originating from the purported mark holder… Secondary meaning generally requires the claimant indicate specific data such as the length and amount of sales under the trademark, the nature and extent of advertising, and consumer association through surveys and media recognition.