Relevant Decisions

Empower Media Partners, LLC v. M. Jarrar, Forum FA2301002030007 (2023), <EmpowerMedia.com>, 3-member, Denied, RDNH

The Panel acknowledges that the Complainant may have had a common law trademark for either or both of these expressions, but the issue for the Panel is whether there is any evidence to support the contention and there is none. It is certainly not evidence that the Complainant stated in its filing for the registered trademark that it had a first use and a first use in commerce from January 3, 1999. It is not evidence because it is now well established that the claimed date of first use in commerce on a US trademark registration certificate is, alone, not evidence of common law rights as of that date.

Equity Trust Company v. Domain Vault / Domain Vault LLC, Forum FA2112001976315, (2022), <equitytrustcompany.com>, Denied

Complainant has provided no evidence that it had acquired unregistered trademark rights prior to Respondent’s registration of the domain name.

Handy Guy Inc. v. Merlin Kauffman, Forum FA2205001998214, <handyguy.com>, 3-member, Denied, RDNH

Nor is the claimed date of first use in the application definitive evidence that the mark actually was used and valid prior to the filing of the application.  Rather, as Respondent points out, where there is a dispute between parties as to the validity of a mark in the period prior to the filing date, “a date of use must be established by appropriate evidence.  A date of use set forth in an application or registration owned by applicant or registrant is not evidence on behalf of that applicant or registrant.” Trademark Manual of Examining Procedure 903.06 (miscited by Respondent as 903.07).

Franki Global Inc. v. Privacy service provided by Withheld for Privacy ehf / Golden Dream, The Stay Gold Co / Samantha Jurashka, WIPO D2021-2901, <befranky.com>, Denied

The date of first use in commerce claimed on a trademark application is of limited evidentiary value in administrative proceedings brought under the Policy. For the purposes of the present proceeding, this date amounts to a mere assertion which would still require to be suitably evidenced. Absent additional supporting evidence, which is lacking on the present record, the Panel is not prepared to find that the Complainant had unregistered trademark rights in a relevant trademark at the material time.

Dow Jones & Company, Inc. v. Idea Studios LLC dba Envent, WIPO D2009-1033,<marketwatch.net>, Denied

The dates of first use and first use in commerce claimed on a trademark application do not establish an evidentiary presumption in favor of a trademark registrant. As McCarthy notes: ‘The allegation of a date of first use in a use-based application for registration is not evidence of a date of first use on behalf of an applicant or registrant.’ [footnote omitted] 3 McCarthy on Trademarks and Unfair Competition § 20:28 (4th ed.) McCarthy also notes: ‘In inter partes proceedings, a trademark registration resulting from a use-based application is proof of use only as of its filing date, not of the date of first use alleged in the application.’ [footnote omitted] (Id.)”

Digest Commentary

• Digest Vol. 4.47 <ssstik .live>, Denied

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Digest Vol. 3.11 <empowermedia.com>, Denied, RDNH