Recently, the Trademark Trial Appeal Board came down with a decision in favor of the Brooklyn Nets, the opposer in the proceeding, reaffirming its previous holding, which voided the trademark application of the WWW.BROOKLYN-NETS.TV’s mark. The Board initially held the mark void on two grounds: failure to use the mark in commerce and likelihood of confusion.
Brooklyn Nets’ Use In Commerce Argument Was A Slam Dunk
This case is a straightforward application of the principle that mere “registration and maintenance of a domain name is not use of the mark for the applied-for services.” Indeed, it is uncontroverted that much more is required to acquire trademark rights in an Internet domain. “Use in commerce” usually requires a record of continuous commercial activities or, at minimum, substantial promotional activities. Merely purchasing a domain name and acquiring a state trademark registration, which is what the applicant alleged in this case, is not enough to establish use of a mark in commerce.
The Passage Of Time Worked In The Brooklyn Nets’ Favor
With regards to likelihood of confusion, inevitably, the decisions turned in great part on the recently acquired fame of the Brooklyn Nets, which conversely affect the proportion of people susceptible of being confused, thereby bolstering the likelihood of confusion argument. The millions spent in advertising and earned in both tickets sales and merchandising in connection with the Brooklyn Nets mark heavily tipped the decision in the Nets’ favor. At present, millions of people know of the Brooklyn Nets, and do need to be protected against confusion (one of the purpose of trademark law).
Had the opposition proceeding came at a time before the team settled in the Barclays Center, the current analysis would have been inadequate. The need to protect consumer against confusion would have likely seemed speculative without the move to Barclays Center and the benefit of hindsight. ((The applicant filed for federal trademark before the Brooklyn Nets did, therefore, the basketball team could only rely on its previously federally registered marks and common law trademark rights in NETS. Because relying on the BROOKLYN NETS federal registration was not an option, the Brooklyn Nets would have had a hard time showing likelihood of confusion if it could not also show strong connections with Brooklyn. Waiting for trademark use in Brooklyn to develop immeasurably bolstered the Brooklyn Nets’ claim.)) Note also that the Brooklyn Nets could have taken things into their own hands earlier through ICANN’s Uniform Domain-Name Dispute Resolution (UDRP) to revoke applicant’s Internet domain, but apparently refrained from doing so. Kudos to the Brooklyn Nets’ attorneys if letting the trademark application run its course was their deliberate decisions.
Points to Ponder
This case makes clear that a domain name that has merely been warehoused is not entitled to trademark protection. Indeed, doing so is similar to reserving a right to a mark, which is strictly prohibited. ((Section 1127 provides in relevant part, “[t]he term “use in commerce” means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.”)) This is especially so where, as in this case, no evidence of neither sale nor extensive advertising activities surfaces. ((Although no claim under the Anti-Cybersquatting Consumer Protection Act (ACPA) arose in this case, it is worth noting that “[r]egistering a famous trademark as a domain name and then offering it for sale to the trademark owner is exactly the wrong Congress intended to remedy when it passed the ACPA.” Ford Motor Co. v Catalanotte, 342 F3d 543, 549 (6th Cir. 2003). In this case, the applicant repeatedly attempted to sell the BROOKLYN-NETS.TV mark to the Brooklyn Nets, including one proposal for one billion dollars.))
Trademark applicants’ best alternative often is to file under an intent-to-use (ITU) application. As this case illustrates, filing on the basis of “use in commerce” comes with added risks because if you have not made the right kind of use at the time of filing, your trademark application and related trademark rights are void ab initio. ITU applications give you additional time to demonstrate use and ensure that by then you have all the indicia of a mark used in commerce.
The case is New Jersey Basketball LLC v. Cybervillage Corp., opposition number 91201370. The initial September 9, 2013 Board decision and the December 3, 2013 appeal can be accessed here.