Need for evidence to show service mark in a personal name

Need for evidence to show service mark in a personal name:

A recent WIPO decision underlines what some practitioners and parties in UDRP proceedings forget- that to win these cases, you need evidence; assertions are not enough.

The decision is also another decision ( although there are cases to the opposite effect) that registration of a trademark in a State registry, rather than the Federal USPTO, at least in the USA, may not be enough to succeed in UDRP procededings.

The decision is Yost Properties LLC v. Viralt-shirts.com, WIPO Case No. D2008-1776.

Read the whole decision, but note the following two important aspects, both dealt with under Identical or Confusingly Similar.

1. The Complainant showed only a service mark registration in the State of Oregan and there was nothing to show that this carried a presumption of validity and no evidence that it had been used in commerce.

2. Moreover, the Complainant had not satisfied the test for cases where the claim is for a service mark in a personal name.

As the panellist said :

" This panelist, either as sole panelist or as part of a three-member panel, has addressed in a number of administrative proceedings under the Policy the hurdles that must be overcome for an individual to establish service mark rights in a personal name. See, e.g., Marvin Lundy and Law Offices of Marvin Lundy, LLP v. Scott E. Diamond, WIPO Case No. D2001-1327; Planned Parenthood Federation of America, Inc. and Gloria Feldt v. Chris Hoffman, WIPO Case No. D2002-1073; Charles Rapier v. Dark Moon Management, WIPO Case No. D2004-0221; Fields for Senate v. Toddles Inc., WIPO Case No. D2006-1510; Laughton Marketing LLC v. Boris Soposki, WIPO Case No. D2008-0718. ...Complainant has not presented any documentary evidence of use in commerce of the personal name argued to constitute a service mark. There is no persuasive basis in the provided record upon which the Panel might reasonably determine that Complainant has established service mark rights in ROGER YOST in the present proceeding."

Accordingly, the Complaint failed.

Lesson to be learned : make sure the evidence is there to establish all elements of the Policy that must be proved.