Don’t Forget to Register!

In a recent Opposition proceeding, the TTAB panel effectively reminds us that registering a trademark, particularly when the application is active in a narrowly-focused industry and/or doesn’t have a lot of consumer-facing documentation, can help avoid a loss down the road.

A group “dedicated to preserving the Judeo-Christian values of our founding fathers” has been using the website iVoterGuide.com since at least 2010, but failed to register both the domain and the phrase iVoterGuide as trademarks.

And, because of this failure to register, when they opposed registration of the marks iVoters and iVoters.com for a group that shares non-partisan information about ballot initiatives, the opposers were forced to rely on common law trademark rights. In theory, common law rights can be powerful and a valid showing of prior trademark usage, but in this case, the opposers were unable to show enough prior use of the trademarks to successfully oppose the registration of iVoters and iVoters.com. Their evidence consisted of little more than agents or associates of the opposers stating that they associated the term iVoterGuide with the conservative group.

This could have been avoided by seeking federal trademark registration. It’s not expensive, or, at least, much less than going through an unsuccessful opposition proceeding. And none of this solves the problem of setting the parties apart from one another. They apparently came to an agreement to post statements that they aren’t affiliated with each other.

TTAB proceeding 91249712.