logo_thelimited_large-148x150Limited Stores lost its Legal Rights Objection (LRO) over the New gTLD .limited which the company Big Fest, LLC (a subsidiary of Donuts, Inc.) applied for. The decision is noteworthy as the panel reasoned that even though Limited Stores had trademark rights in the mark THE LIMITED the addition of the article THE in this case was enough to distinguish the mark from the .limited string, stating:

“[t]ypically, the presence or absence of a definite article (here, ‘the’) makes little or no difference in trademark matters. However, in the present case the Panel believes that the definite article “the” makes a great deal of difference. Without the ‘the’ in the String, Applicant’s claim to legitimacy is much more plausible and stronger, and the prospect of confusion is reduced.”

Further, the panel explained that Donuts, Inc. activities and business plan in the New gTLD space were legitimate with respect to common terms:

“[t]he Panel concludes, on the record before it, that Applicant’s intent here was legitimate and in good faith. Applicant and its corporate family have set about to launch an ambitious Internet business venture. Having spent roughly USD57 million on the gTLD applications alone, they hope to become a leading registry of TLDs with potentially popular appeal. The array of TLD strings for which Applicant and its affiliates have applied reflects an intention to acquire largely popular and common words.”

This is significant for Donuts as it has other applications with pending LRO’s and it will be interesting if this panel’s decision is applied in the same manner to those strings as well. It should also be a lesson to trademark owners that hold “arbitrary” marks – i.e., marks that that have a common meaning or usage besides the trademark association which is normally not associated with the term – it is very possible for a third party to register and use your mark as a New gTLD if they are doing so in association with that mark’s plain meaning...