A recent UDRP decision illustrates the challenges inherent in basing a UDRP claim on common-law trademark rights. Complainant was a California-based company that filed for a U.S. federal trademark application for BLENDID, covering automated food and beverage preparation machines. The application was filed on an intent-to-use basis and published for opposition on December 11, 2018. Respondent was a U.K. resident which invested in domain names for development and sale. It registered the blendid.com domain [...]

While PTAB proceedings are ordinarily decided "on the papers," in certain rare cases the Board will permit live witness testimony at the oral hearing. The Board's precedential decision in K-40 v. Escort explains that "[t]he Board does not envision that live testimony will be necessary at many oral arguments." K-40 Electronics, LLC v. Escort, Inc., IPR2013-00203 (PTAB May 21, 2014) (Paper 34) (made precedential March 18, 2019). Instead, "the Board envisions that live testimony will be necessary [...]

Trademark reputation without use is a jurisprudential paradox. Because of the international flow of information, use of a trademark in one country may give rise to a commercially valuable reputation in another where that trademark has not yet been used (at least not by the first owner). The goodwill arising from that reputation could be exploited by another party and consumers could be confused or deceived. This suggests that the reputation should be protected. [...]