Priority by Two Days: TTAB Grants Cancellation in Domain Name Dispute Turned Trademark Battle
Patent – Patently-O 2025-01-18
Summary:
by Dennis Crouch
As someone quite familiar with the subject matter, I was looking forward to writing about the trademark battle of Nerdio, Inc. v. NerdIO Limited. The appeal was recently dismissed based upon a joint stipulation, but I still wanted to dig into the TTAB file for a few nuggets. Nerdio, Inc. v. NerdIO Limited, Cancellation No. 92075281 (TTAB May 14, 2024). As the headline suggests, the mark was cancelled here based upon two days of prior use by the opposition.
Petitioner Nerdio, Inc. provides cloud-based IT services to small and mid-sized businesses under the NERDIO mark and the website getnerdio.com. Respondent NerdIO Limited is owned by Honk-Kong based Edmond Chow, who purchased the nerdio.com domain name in 1999 with stated plans to eventually commercialize it for software services. In May 2016, Nerdio’s predecessor attempted to purchase the nerdio.com domain from Chow through a series of escalating offers, sending twelve separate emails between May 4-27. Chow rejected these offers with a single reply stating “The domain is not for sale.” (The dollar values of the offers is confidential). After a final purchase attempt on June 8, 2016, Chow filed an intent-to-use application for the NERDIO mark the very next day (June 9, 2016).