The United States Postal Service (USPS) lost its Legal Rights Objection (LRO) to Google’s registry application for the .MAIL New gTLD. Because LRO’s are based on principles of trademark law and the established rights of a mark holder in a national jurisdiction, the objector has to provide facts and evidence that support their claim to ownership of a confusingly similar mark.
In this case the USPS apparently argued that the term MAIL is uniquely identified with the USPS (as a commercial source of origin) and, at the same time, that the term MAIL is a generic or descriptive term that is associated with no one in particular. Here the panel pointed to evidence of dictionary definitions for the term “mail” and common usage that the USPS presented, stating:
“[r]ather than demonstrating that Objector has trademark rights in the term ‘mail,’ these definitions suggest that ‘mail’ is simply a generic term for any national postal system, which, in the United States, happens to be Objector.”
The panel noted this oddity and also the fact that the USPS had disclaimed the term “mail” in numerous trademark registrations for marks that included the term, explaining:
“[i]n sum, Objector’s arguments regarding an association between ‘mail’ and the USPS appear to be an attempt to tacitly claim the standalone term ‘mail’ as one of Objector’s marks. Yet Objector has not argued that it owns such a mark; indeed, it has disclaimed rights in the word ‘mail.’ Because Objector has not asserted trademark rights in ‘mail,’ and because the only rights of Objector that are relevant to a legal rights objection under Section 3.5.2 are trademark rights, Objector’s arguments are inapposite.”
For parties filing an LRO, arguments dealing with the genericness or descriptiveness of a term will not bolster a finding that the objector has enforceable trademark rights...