"Celebrity Attorney" Learns Trademark Law
In this recent case involving Vicki Roberts (2008 WL 1944634), the Trademark Trial and Appeal Board of the Patent and Trademark Office (PTO) held that the use of a term as part of a domain name alone may not constitute use as an indicator of the source of goods or services to be registered.
Vicki Roberts advertises herself as a celebrity attorney, author, and actress. Roberts appears on television programs, such as Extra and Inside Edition, as a legal commentator. Previously, she has commented on the legal woes of Gary Busey and David Carradine. Roberts applied to register the term “irestmycase” with the PTO in regards to her legal services. The examining attorney rejected her application because Roberts failed to show her use of “irestmycase” in a manner to distinguish her services.
Before one is allowed to register their proposed mark with the PTO, the applicant must establish a legitimate use of the mark in commerce. To qualify as a valid use, the mark must be used in such a manner that it would readily be viewed as identifying the services and distinguishing a single source or origin. On appeal, the Board had to decide whether the Roberts’ designations of “irestmycase” would be perceived as a source indicator for her legal services.
The Administrative Judge ruled that none of Roberts’ materials (including her letterhead, campaign posters, photographs of billboards, and a press release regarding Roberts) established her per se use of “irestmycase” in commerce. Roberts’ exhibits did list her website and e-mail address, but the applied for mark was embedded deep within her materials (www.restmycase.com and This e-mail address is being protected from spam bots, you need JavaScript enabled to view it ). Further, the Board did not find that her use of “restmycase” in commerce established a use of “irestmycase.” The Board reiterated that the drawing of a mark must be a substantially exact reproduction of the mark as used with the services.
Additionally, the administrative tribunal found that the mere registration of www.irestmycase.com did not establish “irestmycase” as having been used as a trademark. The court identified that to register a mark, an applicant must show more than the mere use of a domain address to indicate the location of a site. To avoid Roberts’ problem, future applicants should use their proposed mark or the web address in such a manner that the mark or web address will clearly be perceived as a mark, not simply to indicate the address for the applicant’s website.
By Frank Baird III, Legal Team
Source: Sedo.com -- Reprinted with permission -- June 10, 2008
Before one is allowed to register their proposed mark with the PTO, the applicant must establish a legitimate use of the mark in commerce. To qualify as a valid use, the mark must be used in such a manner that it would readily be viewed as identifying the services and distinguishing a single source or origin. On appeal, the Board had to decide whether the Roberts’ designations of “irestmycase” would be perceived as a source indicator for her legal services.
The Administrative Judge ruled that none of Roberts’ materials (including her letterhead, campaign posters, photographs of billboards, and a press release regarding Roberts) established her per se use of “irestmycase” in commerce. Roberts’ exhibits did list her website and e-mail address, but the applied for mark was embedded deep within her materials (www.restmycase.com and This e-mail address is being protected from spam bots, you need JavaScript enabled to view it ). Further, the Board did not find that her use of “restmycase” in commerce established a use of “irestmycase.” The Board reiterated that the drawing of a mark must be a substantially exact reproduction of the mark as used with the services.
Additionally, the administrative tribunal found that the mere registration of www.irestmycase.com did not establish “irestmycase” as having been used as a trademark. The court identified that to register a mark, an applicant must show more than the mere use of a domain address to indicate the location of a site. To avoid Roberts’ problem, future applicants should use their proposed mark or the web address in such a manner that the mark or web address will clearly be perceived as a mark, not simply to indicate the address for the applicant’s website.
By Frank Baird III, Legal Team
Source: Sedo.com -- Reprinted with permission -- June 10, 2008