I will bet that the original opinion letter clearing the mark didn’t see this one coming. Via our hometown paper, the Journal News.
Interesting post with comments at The Seattle Trademark Lawyer regarding Zappos running a campaign titled “So I ZAPPOS At Work.” Michael is correct as the conventional wisdom (as embodied in this INTA brochure) that a trademark should be used as an adjective, not as a verb or a noun.
Wrong: I XEROXED the PLAY-DOH.
Right: I XEROX photocopied the PLAY-DOH modeling compound.
However, come on. If this campaign turns ZAPPOS into the generic term for buying shoes online, then the marketing director will get a promotion. Conventional wisdom has to be applied to the circumstances. TIVO, used as an example in the post of good hygiene, is in a very different situation. As opposed to the fragmented mature market of online retail, Tivo, like Xerox (and RollerBlade) is a technological pioneer. Most people were exposed to DVR technology through the Tivo name, and there was no serious competition for several years (Long term exposure as the sole or primary brand, without a suitable generic term may well be a precondition for genericide – Otis Elevator’s ESCALATOR brand Moving Staircase had the field to itself for decades).
An aggravating factor for Tivo is that it appears to consumers as a branded component in third party products (we have a DirecTV set-top box with TIVO ‘inside’) reinforcing the tendency to confabulate the brand for the functionality. So Tivo’s fears of becoming synonymous with DVR technology is grounded in reality.
Having said that, I still don’t think consumer grammar is the primary cause of genericide – I think genericide is caused by unchecked competitor infringement. A gentle reminder is ok, but Tivo shouldn’t harrass its customers (and industry pundits) because of grammar. What it has to do (and this is not an exclusive insight) is come down like a ton of bricks on each and every third party that uses Tivo to describe their product – because that is trademark infringement.
And as for ZAPPOS? With a million websites selling shoes, I think that they would happily accept Tivo’s burden.
This Jason Calacanis post is interesting as to how he (correctly) guessed that a health-related WikiPedia article had been copied from a prior NIH document (it was good and it had very few edits).
Well, we downloaded the web browser for the Wii, watched YouTube on the family bigscreen TV, and now our video-viewing habits are irrevocably changed. It may or may not be a good thing, but there you are.
A NY-based web company put something cool on the web and I thought “it must be fun to work with those people, I wonder who does their TM work.” Some research suggested that perhaps no one was yet.
Now, if this was a year ago, I could send an email to the GC or CEO and say ‘I liked what you did, etc, When it comes time to consider trademark and copyright counsel, I hope that you will consider our firm,’ and provide a link to the Blog.
However, under the new rules for lawyer advertising in NY, electronic communications to people who are not clients, or friends and family, are prohibited (1200.8(a)(1).
Sending this message on letterhead has two drawbacks. From a marketing point of view it’s less effective because if they read it while not at a computer, they can’t immediately click through to the website. And a copy of the letter would have to be filed with the NY State discliplinary committtee. (1200.8(c)(1))
I could send a professional calling card which states my firm’s emphasis (1200.7(a)(3) (you can’t call it a speciality), but then I’d have to pick out paper stock and font style, it would take several weeks, and a calling card wouldn’t be a personalized message.
So I’m left with the website, which is OK as long as I indicate on the website that this is lawyer advertising (1200.6(f)), use a domain name that reflects my name (1200.7(e)), don’t use a nickname that imples an ability to obtain results (i.e. “The Enjoiner”)(1200.6(c)(7) and archive the site (1200.6.(g)).
But it’s unlikely that anyone at the prospect reads the Blog.
So what I can do is put a coded message in this post and if you can figure out which company I’m talking about, and you’re friends or family with them, drop them a line and tell them what a great firm this is. However you can’t be a paid because 1200.6(c)(2) prohibits (undisclosed) paid testimonials, and you can’t be an actor pretending to be my client (1200.6(c)(4).
From a UDRP decision in which the L.A. Angels failed to obtain ANGELS.COM:
“Complainant denies that Respondent has any rights or legitimate interest in the disputed domain name. In its Complaint, it denies that Respondent owns any legitimate trademark rights in any ANGELS mark.
Respondent relies on the generic nature of the word “Angels,” what would give him a right to register the corresponding domain name. The Panel believes that by this bare allegation alone any respondent could develop a right or legitimate interest in a disputed domain name where as here, a complainant has trademark rights in a mark consisting of a generic word. Because this argument leads to an absurd conclusion, it should be dismissed. Nor is more useful to Respondent his suggestion that he registered the domain name because he calls his daughter “Daddy’s Angel,” since he does not provide any evidence of such fact. In this respect the Panel observes that the domain name in dispute is
Respondent’s reliance on his service mark registration for the ANGELS mark in Korea, whose certificate is shown at Annex 1 to the Response, deserves more attention. This registration covers services provided by day care centers or nursing homes of class 43. According to the Korean-speaking member of this Panel, the mark registered with Korea’s PTO is “엔젤스 ANGELS.” The text before the word “ANGELS” consists of Korean characters, the sound of which corresponds exactly to the English word “angels.”
As shown in the registration certificate, Respondent obtained the registration before he received any notice of the dispute. This is important in considering the weight of Respondent’s trademark registration. The Panel is aware that “the general principle that the owner of a domain name identical to a previous trademark or service mark may, when challenged by the trademark owner, establish (retroactively) legitimate use simply by filing a fresh trademark application in a jurisdiction other than those where the Complainant’s trademark is registered, is a dangerous principle.” See ISL Mktg. AG, & the Union des Associations Européennes de Football v. The European Unique Res. Org. 2000 B.V., D2000-0230 (WIPO July 5, 2000). However, differing from LION NATHAN LIMITED v. WALLACE WAUGH, D2000-0030, (WIPO Apr. 3, 2000), and as found in ISL Marketing, here Respondent’s registration of the ANGELS mark in Korea predates any notice of the dispute.
Furthermore, like in ISL Marketing, here Respondent apparently went through the registration process of his ANGELS mark without any opposition from Complainant. This is important, since Complainant, as contended in its Additional Submission and shown with Exhibit H, has two Korean trademark registrations for “Angels.” One of them is for “Angels stylized”, application No. 40-2004-49085, application date October 29, 2004, Registration No. 642913, Registration date December 13, 2005, where the “Angels” word is clearly displayed. The other registration is for “ANGELS and design,” application No. 82-6389, application date June 28, 1982, Registration No. 4000099840000, registration date April 7, 1984. Based on these registrations, Complainant could have opposed Respondent’s trademark application, but apparently chose not to do it.
In absence of contrary evidence, the Panel finds that Respondent’s trademark registration for ANGELS is a valid title under Korean law. See Cyrillus S.A .v. KRP Tekstil, D2001-0551 (WIPO Jul. 5, 2001) (finding that a trademark registration in Turkey was a valid title for the respondent since the trademark application had not been opposed by the complainant, and considering that an administrative panel under the Policy and Rules is not intended to carry out an assessment on the invalidity of a trademark).
The Panel is aware that a respondent might seek the registration of a trademark in a convenient foreign jurisdiction, where the complainant had no trademark registrations, in order to fabricate rights or legitimate interests in a domain name. See Société Vortex contre Association firstname.lastname@example.org, D2001-0803 (WIPO Aug. 22, 2001). Here, Respondent’s registration was not made in any country of convenience, but in Korea, his own country, and where Complainant had previous trademark registrations that could have been a basis for an opposition. The present case also clearly differs from Madonna. In Ciccone, p/k/a Madonna v. Parisi and “Madonna.com,” D2000-0847 (WIPO Oct. 12, 2000), the respondent had the same nationality as the complainant, he was not located in Tunisia (the country where he obtained the trademark registration), and he admitted that he had obtained the trademark registration to protect his interests in the domain name. Further, the panel there considered that Tunisian registrations were issued upon application, without any substantive examination. Under the circumstances, the Panel is not ready to find that Respondent’s trademark registration in Korea was obtained merely to circumvent the application of the Policy.
As there are no elements suggesting that Respondent’s trademark registration is other than genuine, the Panel finds that Respondent, based on his trademark rights in the mark ANGELS in class 43, has rights in the disputed domain name. See Westec Interactive Security, Inc. v. Express Post Ltd. (Westec Div.), D2005-0811 (WIPO Oct. 7, 2005) (finding that the respondent had rights in respect of the domain name because there was nothing suggesting that the respondent’s Russian Federation trademark registration was anything than genuine). In the circumstances, Respondent’s trademark registration is consistent with preparations of a bona fide offering of services of class 43.
In sum, Complainant failed to prove that Respondent lacks rights or legitimate interests in the domain name.
Registration and Use in Bad Faith
Although the Panel’s finding under the second element makes a finding on bad faith unnecessary, the Panel believes that Complainant also failed in proving that Respondent registered the disputed domain name in bad faith. In order to make such a determination, a panel must be satisfied that the respondent was or must have been aware of the complainant’s mark, trade name or existence at the time of registering the domain name. In the present case, the Panel does not believe that Complainant succeeds in proving that Respondent knew Complainant’s ANGELS marks or trade name, or was otherwise aware of Complainant before acquiring the domain name at issue. Although Complainant asserts that it has profusely marketed and publicized its ANGELS marks and services in Korea, it does not provide the Panel with evidence leading us to conclude that a Korean citizen like Respondent should be found to know Complainant more likely than not. Further, the Panel does not believe that the theory of constructive knowledge may be applicable to a foreign country, as Korea is in respect of the U.S.A.
Independently from the fact that Complainant’s ANGELS mark is valid, it is also a generic term, in principle apt to support the assertions of Respondent, that he chose it because of its generic nature and because it can be used to refer to small children, such as those who would be taken care of in his planned day care center. The Panel believes that Complainant failed to show that its mark ANGELS is famous in Korea, or that it has acquired secondary meaning in such country, i.e. that the Korean public mainly perceives the word “Angels” as a trademark protecting an American baseball club or its services, rather than as a common noun referring to the messengers of God, or figuratively to small children. See Btex Ltd. v. Noble, FA 102464 (Nat. Arb. Forum Jan. 11, 2002) (finding that the complainant failed to show that the relevant public perceives the phrase “streetmap” as a trademark rather than as a mere description of the goods or services).
Further, it is not contested that Complainant’s agents first contacted Respondent in search of an offer to transfer the domain name for a price, and that Respondent did not know that they were Complainant’s agents. This fact does not support Complainant’s suggestion that Respondent registered the domain name with the primary purpose of selling it to Complainant. See FilmNet Inc. v Onetz, FA 96196 (Nat. Arb. Forum Feb. 12, 2001) (finding that the fact that it was the complainant and not the respondent who had initiated contact, inquiring about purchasing the domain name, tended to weigh against a finding of bad faith).
In sum, Complainant fails to prove that the disputed domain name was registered in bad faith. This finding makes unnecessary for the Panel to examine Respondent’s agreement with Sedo’s domain name “parking” services, and the resulting advertisements posted on the website at the domain name in dispute.”