Located in Alabama, Jeffers Inc claims to be one of the largest privately owned catalog and eCommerce animal health supply retailers. Founded in 1975 by Keith Jeffers, the company operates from the website jefferspet.com registered in 1999.
It is quite clear to see that Jeffers.com would be a more desirable domain name for Mr Jeffers to own, but with a registration date of 1996 and clear indication that the domain refers to a personal name (surname) it will be very difficult for them to show that the term is a distinctive identifier associated with their goods and services.
A preliminary search conducted with the United States Patent and Trademark Office reveals a word mark for the term “JEFFERS” with a registration date of October 7, 1997 claiming first use in 1976 however as the Panel held in the case of Hidden Values, Inc. v. Spirit Marketing c/o Paul Morrissette; FA1204001437627:
“The dates of first use and first use in Commerce claimed on a trademark application do not establish an evidentiary presumption in favor of a trademark registrant…This is because an applicant is not required to introduce evidence of the date of use of the mark or of the date of first use of the specimens submitted with the application.”
More problems arise with Jeffers Inc’s trademark registration which has been issued under Section 2(F) of the Lanham Act which states:
“Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing herein shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant’s goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made.”
The existence of 2(F) itself may be damaging to Jeffers Claim as it suggests that the trademark application was initially refused pursuant to a USPTO office action on grounds that the trademark had acquired no distinctiveness.
If Jeffers Inc, are to overcome the first hurdle of the UDRP (demonstrating rights in a trademark) they will need to make sure that they provide sufficient evidence of “secondary meaning” to satisfy their burden. Although the trademark office may accept that the mark has been used exclusively and continuously for an extensive period of time, simply presenting the trademark certificate under the UDRP may not be enough.
Since the registration of Jeffers.com, the website has never been fully developed but merely resolved to a PPC parking page displaying links to Pet related goods and services. This could prove detrimental to the Respondent’s case when it comes to bad faith use but it is still paramount that the Complainant demonstrate that the domain name was registered back in 1996 with their trademark in mind.
This will be an interesting case to watch.