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Why Should I Select a Distinctive Mark?
Posted on Jan. 26, 2017

There are many reasons to select a distinctive mark, that is, a mark that serves the purpose of identifying the source of the goods or services rather than describing some quality or characteristic of the goods or services. One reason is the availability of legal relief against cybersquatters. 

Under the federal Anticybersquatting Consumer Protection Act (ACPA), the owner of a distinctive trademark has the right to sue a person who intentionally registers a domain name that contains the trademark (or some close variation of the trademark) with the hope of selling it to the trademark owner for a profit (such persons are commonly called “cybersquatters”). The owner of a non-distinctive trademark cannot use ACPA to shut down a cybersquatter, which greatly complicates the task.

A Florida business, Tropic Ocean Airways (TOA), recently learned this lesson the hard way. In 2011, TOA began using the non-distinctive mark TROPIC OCEAN AIRWAYS for its charter airplane service that provided flights to the Caribbean. Shortly thereafter, it noticed that one of its competitors had registered the domain name tropicoceanairways.com. TOA filed an ACPA lawsuit against the competitor. The court dismissed the lawsuit, finding that TOA had not plead facts showing that its TROPIC OCEAN AIRWAYS mark was distinctive, as required by ACPA. Tropic Ocean Airways, Inc. v. Floyd, 598 Fed. Appx. 608 (11thCir. 2014). Today, TOA uses the domain name flytropic.com. Meanwhile, the alleged cybersquatter is not even using the domain name tropicoceanairways.com—but it still owns the registration for it.

The other way to shut down a cybersquatter is to bring a proceeding under the Uniform Domain Name Dispute Resolution Policy (UDRP), which is usually cheaper and faster than bringing an ACPA claim in federal court. As with ACPA, a distinctive mark is a prerequisite to success in a UDRP proceeding. The first element of a UDRP claim requires the trademark owner to prove that it has “rights” in the mark that is being cybersquatted on by the challenged domain name. Since it is only possible to have “rights” in a distinctive mark (although non-distinctive marks can acquire distinctiveness by continuous and exclusive use over a number of years), only distinctive marks can be protected in a UDRP proceeding.     

The bottom line is that owners of distinctive marks have good legal remedies against cybersquatters. Owners of non-distinctive marks do not. So if you want to use a non-distinctive mark for your product—and there are situations in which that might make sense for your business—be sure that you obtain the domain name(s) incorporating the mark before you start using the mark, because the courts will not help you get it if someone else registers the domain name first. You should also be careful to pre-register domain names when you file an intent-to-use application for a distinctive mark—you have no enforceable “rights” against cybersquatters until you actually start using the distinctive mark in commerce.

Trademark Law
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Attorney Brett D. Ekins

Brett D. Ekins is an experienced and accomplished trademark and intellectual property lawyer. He represents clients in intellectual property matters and commercial litigation throughout Utah, Nevada and California in state and federal courts, including high-stakes litigation involving trademarks, patents, copyrights and trade secrets. Brett also has extensive experience registering trademarks with the United States Patent and Trademark Office, including proceedings before the Trademark Trial and Appeal Board.