Discussion:
What is the name of your state? NY
I received an email C&D concerning a one-world "phrase" that's commonly used in the wedding industry. Someone in Nevada has trademarked this single word and is claiming infringement.
Do you think this is enforceable? I'd rather not roll over on this unless it really makes sense. The phrase is so generally used it surprises me that the trademark office would hand out a license for it.
More: I use this word in some shirts I designed, and a cartoon strip, all distributed on the web. It appears they registered it for shirts, so I can see them having some kind of a case for that (maybe). But the cartoon seems a lot dodgier. In either case, this word appeared in several industry-related book titles before the Nevada man registered it and was recently used as the title of some kind of TV show (I don't watch TV). Thoughts?
Answer:
If the NV guy actually has a federally-registered trademark, then he may be able to keep you and others from continuing to use it. Have you checked the USPTO website, , to see if he actually has a registered mark (not pending, but actually issued)?
Do you think this is enforceable? This is a question for the courts. If he actually has obtained a registration, then it is presumed to be valid and enforceable, and it is up to the person challenging the mark's validity to overcome that presumption.
The phrase is so generally used it surprises me that the trademark office would hand out a license for it. Check to see that is actually does have an issued registration before panicking. A pending registration is unenforceable -- it has to be an actual registration before it becomes enforceable. However, just FYI, even common phrases may be trademarked depending on the scope of their actual use in commerce, although a common phrase, if registered, may have a fairly narrow range of enforceability.
In either case, this word appeared in several industry-related book titles before the Nevada man registered it and was recently used as the title of some kind of TV show (I don't watch TV). Preexisting use does not necessarily make a trademark registration invalid. If there are preexisting uses of a mark, then the mark holder may not sue the preexisting users for infringement; however, the mark holder MAY keep the preexisting users from expanding the use of the mark.
So, you should check to see if he does indeed have a federal registration; if he does, then you are likely best served to see a local trademark attorney who can give you an opinion as to the likelihood of you infringing on his mark.
One last thing -- if he doesn't have a federal regsitration, he may have filed for a state trademark registration. In that case, things get singificantly more complicated -- although state trademarks are only valid within the state in which they are issued, whether or not your internet site violates his NV trademark is a question of NV state law. Again, in this case, you'll probably want to speak with an attorney.
Answer:
This is a very good response, 'divgradcurl.' I really appreciate you taking this time with this and other posts. It's an interesting subject and I'm glad to learn a little more about it, even if I am on the wrong end!
I think I will probably comply with most of this guy's demands. But not knowing trademark law well, it looks as if his "domain" is pretty narrow.
I did check the website you suggest, and it's registered, not pending. But this is what they gave him:
IC 025. US 022 039. G & S: T-shirts, sweatshirts and hats. FIRST USE: 20020610. FIRST USE IN COMMERCE: 20020610
IC 028. US 022 023 038 050. G & S: DOLLS. FIRST USE: 20020610. FIRST USE IN COMMERCE: 20020610
Can that possibly mean he can't enforce this outside of use in dolls and apparel? Did they give him these categories because they felt the word was too general otherwise?
This makes me wonder what phrases I might want to attempt to trademark in the future. Of course, then I might have to spend money defending them.
Thanks again for your help!
Answer:
Can that possibly mean he can't enforce this outside of use in dolls and apparel? Maybe. The test for trademark infringement is "likelihood of confusion" -- so where there is no "likelihodd of confusion" over the origin or source of the products, infringement is unlikely to be found. If his mark is for t-shirts, and you are using the phrase in a comic strip, then there may not be infringement, because a consumer would not be "confused" into thinking that the trademark owner was the one making the comic strip. However, if the comic strip was about t-shirts, then, who knows...
However, this test breaks down in the case of well-known or so-called "famous" marks -- marks like Amazon, or Kodak -- you can't use one of those marks even if you don't sell books or cameras, because famous marks are presumed to cause confusion regardless of the product.
However, it is very unlikely that would be the case here -- if the mark was a "famous" mark, you'd know it.
Did they give him these categories because they felt the word was too general otherwise? Maybe, but it is more likely that those are the categories of goods HE specified. Remember, the purpose of a trademark is not to keep others from doing certain things -- although they sometimes appear to be used that way -- rather, trademarks are designed to be a designation of origin. The purpose of a trademark is to identify the source of a product to a consumer, so a consumer will immediately know that the product is from a particular vendor, and will associate the vendor's reputation to the product.
For example, if you are a vendor of socks, and you have a red square on every sock you sell, people will recognize that a red square means its one of your socks, and will associate whatever "goodwill" you have to socks with red squares. However, it would be unfair for you to keep, say, an oil-tank manufacturer from also using a red square, because it is unlikely that anyone would transfer your "goodwill" to the oil-tank, because you are not in the oil-tank business.
I guess this is getting a little technical -- but the point is, the choice of goods in the application may or may not be limiting, depending on the mark and how the mark is used and with what consistency the mark is used.
This makes me wonder what phrases I might want to attempt to trademark in the future. You can't trademark a phrase simply to keep others from using it -- it has to be a phrase that is used consistently in the sale and marketing of goods, such that it becomes associated with your company and your goods, and people think of your company and goods when they hear the phrase. That's the purpose of a trademark.
Of course, then I might have to spend money defending them. All trademarks are "use 'em or lose 'em" -- but even beyond that, if you don't defend your mark, you may lose the mark. Trademarks provide a fairly high level of protection, and are potentially perpetual, so the tradeoff is that you have to actively use and defend your mark to keep it.
Answer:
I have one more question for you, and if it's a dumb question, you can "fail" me, okay?
Is it at all possible that *I* could trademark the word in question for a comic strip? Or is it one player, per phrase? This whole thing has really got me curious.
Answer:
Is it at all possible that *I* could trademark the word in question for a comic strip? Potentially, sure. The USPTO database lists 351 seperate registrations containing the word ACME, alone or with other words. Again, everything will depend on how each party is using the word, and whether or not they have a similar consumer base that will be "confused."
Remember, however, that to obtain a registration you need to use the term in interstate commerce -- just having the word appear occassionally in a comic strip is probably insufficient -- you need to have consistent use of the word to create a "brand."