Trademark applications are not sufficient to demonstrate prior rights
On November 10, 2022, a court decision reaffirmed some fundamental UDRP rules: the complainant must prove they own a trademark and that the disputed domain name violates it. This can be a registered trademark (a completed registered or filed trademark application) or an unregistered trademark (which acquired distinctiveness through use in a common law country). However, arguing such rights without backing them up with evidence will, of course, lead nowhere.
In the case at hand, the UDRP complaint was filed by Black Foodie Company. Since April 2015, the complainant has been operating a culinary platform offering recipes, events, and food guides, along with the sale of “goodies” (such as t-shirts, sweatshirts, etc.) at www.blackfoodie.co, in connection with gastronomy seen through Black people. The complainant maintains that its platform reaches millions of people, has won several awards, and enjoys media recognition. The proposed domain name, <blackfoodie.com>registered anonymously on June 17, 2009. The disputed website notably features recipes and information on restaurants owned by Black people (the site was not yet in place at the time of the complaint). The name was later acquired by Braxton Richmond in 2022, CEO of Black Foodie Finder, and registered in 2020. The defendant also operates the domain name <blackchef.com>. Indeed, the defendant alleges that they use the disputed domain name for a website and a mobile application. This is serving as a directory for businesses and culinary events. They also hold a 2020 trademark “BLACK FOODIE FINDER” registered on the Supplementary Register in the United States, demonstrating their legitimate interest in said name.
However, the complainant does not hold a registered trademark. Due to unclear wording, risk of confusion with prior rights, and the description of the sign, the company’s two US trademark applications have been suspended. The complainant should have known that their complaint had no chance of success, and this was for each of the conditions of the UDRP complaint. The Canadian trademark application also received a provisional refusal concerning its wording. Notably, these three applications are dated from 2021. The complainant boasts, in particular, of having over 220,000 social media followers. However, it is clear from reading the decision that the complainant did not document its arguments, which is both necessary and all the more significant when the invoked sign is descriptive, and the defendant operates under a very similar name for their own activity. They also note that the claimed trademark is inherently descriptive as the terms “black foodie” designate food and Black people. Furthermore, several other websites like www.theblackfoodies.com are used for the same products and services as those of the complainant.
As a result, the expert rejected the complaint because the complainant cannot assert trademark rights. The USPTO’s reasoning is also echoed, which concludes that a trademark “that describes a user or group of targeted users of a product or service is simply descriptive.” The purpose of a trademark is to indicate the origin of products and services. Nevertheless, even if Black Foodie had a registered trademark, it is highly likely that an expert would oppose the complaint. Common law rights remain possible. As the expert recalls, several factors demonstrate these rights: the nature and duration of use; the volume of sales made; the nature and extent of the brand’s promotion; the degree of public knowledge; consumer surveys.