In an interesting recent opinion, the U.S. District Court for the District of Columbia rebuffed the Libyan Government’s bid to obtain a transfer to it of the domain name registration for libyanembassy.com from a “legalization expeditor” – a company that certifies documents as one step in the process of international legalization of documents (such as foreign birth certificates).
The Libyan Government brought an action under the Anticybersquatting Consumer Protection Act (ACPA) against Ahmad Miski, who operates the Arab-American Chamber of Commerce, a document certification service. Miski redirected traffic to the domain name to his website promoting his certification services. Libya contended that Miski’s registration and use of the domain name infringed its trademark for “Libyan Embassy.”
The case raised two issues that are often misunderstood. First, the court dealt with a claim under an unregistered trademark – “Libyan Embassy” – and had to determine whether it could be enforced under the ACPA. Second, the court had to examine whether the term “Libyan Embassy” is descriptive or suggestive under trademark law. The determination of whether a trademark is descriptive or suggestive is crucial to determining whether trademark rights in the phrase are enforceable, as a merely “descriptive” phrase is enforceable as a trademark only if it acquires “secondary meaning.”
The court quickly dispensed with the issue surrounding the unregistered trademark. It correctly noted that while an unregistered trademark is not entitled to the presumption of validity enjoyed by a registered trademark, it can nonetheless be enforced. However, the Libyan Government’s claim then collapsed. Libya took the position that the phrase “Libyan Embassy” was suggestive under trademark law (meaning that the term itself tells a customer that it refers to a brand and immediately signals to a consumer a brand or product source), which would have entitled it to protection under trademark law.
Miski, conversely, took the position that the phrase was merely descriptive (meaning that it just describes a product’s features, qualities or ingredients, or describes the use to which a product is put), which would preclude its enforceability under trademark law, unless it acquired secondary meaning in the market (the classic example of a merely descriptive mark clothed with secondary meaning is “American Airlines”).
Ultimately, the court performed a cogent and concise analysis of the issues under trademark law, and determined that the term “Libyan Embassy” was merely descriptive, as little imagination is necessary to understand from the name what services (consular services) are being offered. A suggestive mark, on the other hand, requires that there be some element of imagination necessary to tie the mark to the goods or services offered (think Coppertone™ – for suntan products).
Libya could have overcome this ruling, however, by showing that the term “Libyan Embassy” had obtained secondary meaning – which occurs when in the minds of the public, the primary significance of the mark is to identify the source of the product rather than the product itself. It seems that Libya should have had little trouble making this showing. All it needed to do was present evidence – typically through use of a survey showing public perceptions of what is meant by “Libyan Embassy” and the services it provides – showing that the public associates “Libyan Embassy” with the services provided by the Embassy of Libya. This would seem to be an easy task. But Libya presented no such evidence. Therefore, the Court found that it failed to meet its burden to show secondary meaning.
Libya’s failure in this regard is a cautionary note to those who enter into trademark litigation without adequate preparation. Obtaining evidence through the use of surveys, economic analysis, and tracking down persons who have actually been confused by infringing behavior can be expensive, time-consuming, and difficult. But in the world of trademark litigation, it also can be indispensable. It seems likely that had Libya taken these steps before pursuing the registrant of, it would have had a reasonably strong chance of prevailing. Having not done so, its case was irretrievably compromised.