You can acquire rights over a term through two ways. One is through registering the mark in a Government authority. This is what is known as Trademark Rights. Second is the one that is obtained through continuous usage of a term in their business ventures. Such rights are called Common Law rights. Let’s look at the scope of the latter, through this case study.
The domain name HudsonFurniture.com, was under contention in the Forum. The Complainant was Hudson’s Furniture Showroom, Inc. The Complainant stated that it had been using the mark ‘HUDSON’S FURNITURE’ for its business in Florida for 40 years. By the virtue of which, the Complainant acquires Common Law rights. It has also been using the mark in its website at the domain name HudsonsFurniture.com.
The Respondent had acquired the domain name in an auction in April 2020. The domain name before the Respondent, was with the Complainant. But the Complainant let the domain name lapse.
The panel noted that the terms were HUDSON and FURNITURE were generic. The Complainant also didn’t provide sufficient evidence to establish its claim of 40 years of continuous usage. The Complainant is located in Florida and operates in a limited geographical area. The Complainant’s firm hasn’t reached the level of popularity that could mean that these terms have established secondary meaning. The Court hence, denied the Complainant.
Common Law rights could be best understood by going through several related cases and forming a holistic view about it. Don’t worry, we’ll keep you updated!
Read about this case in detail, here.