1.4 Descriptive Marks
Descriptive terms are capable of acquiring distinctiveness but the more descriptive the term, the more evidence will be required to establish a secondary meaning. When it comes to descriptive terms, evidence required to show acquired distinctiveness or “secondary meaning” is directly proportional to the degree of non-distinctiveness of the mark at issue. Panels should be wary of easily conferring common law rights upon complainants where the claimed trademark comprises what appears to be a mere common descriptive term. In such cases, the conferral of common law rights upon a merely descriptive term may serve to unjustifiably provide standing to a Complainant under the Policy when in reality the Complainant is just one of many users of a common descriptive term in the marketplace. As Lord Herschell in Eastman Photographic Material Co., Ltd. v. Comptroller-General of Patents, Designs and Trade Marks, [1898] AA.C. 571 at p. 580: “The vocabulary of the English language is common property: it belongs alike to all; and no one ought to be permitted to prevent other members of the community from using it for purposes of description, a word which has reference to the character of quality of the goods.”
The Policy was not intended to permit a party who elects to register or use a common term as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner.
Additional Information
Relevant Decisions
Sleep Number Corporation v. Omri Shalom / Silver Scope Media, Forum FA2309002062168, <beds.com>, 3-member, Denied, RDNH
The Panel notes that the disputed domain name comprises solely of a descriptive term which is not inherently distinctive. In such case, there is a greater onus on Complainant to present evidence of the acquired distinctiveness or secondary meaning.
Federación Nacional de Cafeteros de Colombia v. Vince Harasymiak, Domain Capital, WIPO D2022-4022, <colombiancoffee.com>, 3-member, Denied
Even if the Panel were to accept that the design elements of the mark do not overtake the textual elements in significance, an additional difficulty for the Complainant is that in either language those words are descriptive.
uSwitch Limited v. FreeSatServices, CAC-UDRP-104446 (2022), <youswitch.biz>, Denied, RDNH
However, not all rights are the same. No-one can own a number or dictionary word to the exclusion of the rest of the world. This is the point that the Respondent is making in the response –is if you select a common word or a number/highly descriptive mark, you cannot expect any exclusivity in it and small differences must be tolerated.
One.com Group AB v. Stan N, CAC-UDRP-103567 , (2021), <0ne.com>, Denied
No-one can own a number or dictionary word to the exclusion of the rest of the world. They are inherently lacking in the distinctiveness required for trade mark law. Trade marks are badges of origin that enable the public to identify the goods and services of a trader so they can make a repeat purchase safe in the knowledge that the quality should be the same the second time around. An ordinary word or number cannot function in that way for obvious reasons. That is, unless they have what we call “acquired distinctiveness” or secondary meaning so that they are so famous that it is the brand that the relevant public bring to mind and not the dictionary term. That is not really possible with a number or a common word –so that in their original meaning, they remain the property of and available to, all. This forms the basis of the prohibition on descriptive and generic marks which recognises that many traders want to use descriptive terms for their informational values and that no one trader should be able to monopolise them. Those selecting such terms as marks have to tolerate confusion and the Policy reflects this by protecting such as fair or legitimate use. Furthermore, consumers are not easily confused by such terms as they understand they are common ordinary terms, employed by many undertakings, with a low degree of distinctiveness.
Global Personals, LLC v. Daniel Carvallo, Skyloop Digital Ltd, Forum FA2205001995514, <flingpals.com>, Denied
Taking into account that the trademark is compound by a descriptive term (FLING describes the services developed by Complainant) its trademark rights are weak. This weakness also provides from the fact the specification of goods is very narrow, and in a way to try to avoid rejection by the USPTO based on the descriptiveness. This Panel concludes that Complainant’s trademarks are at the very least quasi-descriptive for the services identified by it and it derives in an extremely narrow scope of protection.