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November 2, 2010 / Nate Harris

The Federal Circuit’s Treatment of [THING].COM domains

Thomas L. Casagrande has written a great article about the Federal Circuit’s treatment of (appeals of refusals of) applications to register [THING].COM trademarks. Though early cases employed a descriptiveness analysis of those “domain marks,” recent cases have treated them as generic. Casagrande thinks this development is a mistake:

[THING].COM trademarks would almost always face a difficult descriptiveness hurdle. It would be far more intellectually honest to address them under settled descriptiveness principles than to try to discourage further applications through the unjustified broadening of previously settled genericness principles.

Though this is a trademark-focused article, the considerations are relevant to the UDRP for both the first prong (or “zeroth prong,” a term I am trying to popularize for the requirement that the complainant have rights in a mark) and the second prong (the respondent’s rights or legitimate interest in the disputed domain).

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2 Comments

  1. Bret Moore / Nov 2 2010 5:17 am

    It’s an interesting article, but I’m not sure that I agree with his conclusion that the Federal Circuit’s logic is wrong, particularly from the UDRP perspective. Don’t have my notes in front of me, but the key point to make (IIRC) is that TLD suffixes are routinely, and rightly, ignored as immaterial to the analysis of a presence of a mark in a UDRP proceeding, but he would have us believe that the inclusion of a TLD somehow creates a descriptive mark out of a generic term. I think what he’s arguing – that there’s a difference between the early cases and these later ones (which found the marks to be generic, HOTELS.COM and LAWYERS.COM among them, I think) – is correct, but his argument that they are properly descriptive does not sound right to me. I don’t think that is reflective of how anyone uses or thinks of the Internet, despite the statistic (a survey) that he cites.

    I’m planning on writing something about this that incorporates the UDRP-side, which he pretty much ignored in his article. It’s on the to-do list!

  2. Nate Harris / Nov 2 2010 8:55 am

    You make a great point, Bret, though I do think that HOTELS.COM, for example, has acquired distinctiveness through advertising, etc. What’s interesting about a “.com” trademark is that the traditional inquiry–whether consumers recognize that the goods or services come from a single source–will always be satisfied, in that most (if not all) consumers realize that there can only be one HOTELS.COM.

    Definitely let me know when you write about this.

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