The Importance of Proper Brand Name Selection Rears Its Ugly Head…Again

The recent United States Trademark Trial and Appeal Board decision of In re Wm. B. Coleman Co., Inc. highlights the absolute necessity for all brand owners to select distinctive and legally protectable company and brand names. Wm B. Coleman Co., Inc. found out the hard way that selecting a generic “trademark” does not – in the end – have any rewards.

The mark at issue was ELECTRIC CANDLE COMPANY for light bulbs; lighting fixtures; and lighting accessories, namely, candle sleeves. The issue in the case was whether the record showed that members of the relevant public would primarily use or understand the term sought to be registered as referring to the category of goods or services in question – which in this case were those goods listed above.

The two prong inquiry as to whether a term or terms are generic for certain goods or services is (1) what is the genus of goods or services at issue and (2) is the term sought to be registered understood by the relevant public primarily to refer the that genus of goods or services. Based upon the evidence of record, the Board found that the genus of goods at issue is defined by the Applicant’s identification of goods, namely light bulbs; lighting fixtures; and lighting accessories, namely, candle sleeves. The Board further noted that the identification of goods encompasses products known as “electric candles.”

The Board further noted that electric candles are a type of good sold by the Applicant, as evidenced by its website: “This part is used to keep the electric candle from moving during shipment and may be discarded…Electric Candles are Safe and Convenient.” Turning to the second inquiry, the public’s understanding of the term ELECTRIC CANDLE COMPANY, the Board found that the relevant public, when they consider ELECTRIC CANDLE COMPANY in conjunction with the class of goods involved, would readily understand that term to identify a type of lighting fixture, namely an electric candle.

The Board further held that the addition of the non-distinctive, generic term COMPANY to the generic term ELECTRIC CANDLE does not somehow mysteriously render the generic wording ELECTRIC CANDLE COMPANY into a distinctive and legally protectable “mark.” Accordingly, the Board held that the Wm B. Coleman Co., Inc. did not own a legally protectable mark. The Wm B. Coleman Co., Inc. started use of the “mark” ELECTRIC CANDLE COMPANY in 2002.

Eight years later, it has nothing to show for it. And unfortunately, competitors themselves can likely freely use the term ELECTRIC CANDLE COMPANY without fear of infringement (assuming that Wm B. Coleman Co., Inc. doesn’t appeal the decision and prevail). And there’s really nothing the Wm B. Coleman Co., Inc. can do about it.

What do you think about a new competitor using the name “The Original Electric Candle Company”? Is that permissible? Why not? Will Wm B. Coleman Co., Inc. start over and re-brand the company and products?

I surely hope so.

Inconsistent UDRP Decisions Raise More Concerns Over Current UDRP Process

Two recent UDRP cases involving the same Complainant and mark and essentially identical domain names (amerincanairways.com and americanairway.com) have yielded inconsistent decisions.

In the case of American Airlines, Inc. v. MegaWeb.com Inc. (reported here last week), the panel denied transfer of the domain name americanairways.com on the ground the subject domain name and Complainant’s trademark, American Airlines, are not confusingly similar. What made that case most interesting – and puzzling – is that the panel also concluded that the Respondent had no legitimate interest in the subject domain name and reserved the subject domain name in bad faith.

In my last post, I posed the following question: can domain names that aren’t confusingly similar to complainants’ trademarks be considered to have been registered in bad faith? No confusion equals no bad faith? Right?

It has come to my attention that there is also a companion case, which was decided only days earlier on March 29, 2010: American Airlines, Inc. v. Domain Admin a/k/a Taranga Services Pty Ltd.  Interestingly, the panel in that case concluded that Complaint’s mark, American Airlines, and the subject domain name, americanairway.com, are confusingly similar. The panel also concluded that the Respondent had no legitimate interest in the subject domain name and had reserved the subject domain name in bad faith. Accordingly, the panel ordered transfer of the subject domain name to Complainant.

Two things bother me. The first is the inconsistencies within the decision of the americanairways case (issued on April 13, 2010). Again, how can we have no confusion and still have bad faith? As I pondered in my previous post, might the panel have been suggesting that the Complainant simply fell short on evidence needed to prove confusion? Was the record simply lacking? The second thing that troubles me is that two separate panels reached opposite decisions, just days apart, in two cases involving – what appear to be – the same trademark and essentially same facts and domain names.

How do we reconcile these two decisions? Should there be a requirement that panels handling companion cases discuss them before rendering decisions to ensure consistency? Is there a need to take a hard look at the current UDRP system?