Wednesday, February 07, 2007

Generic Names

Scott Allen posed a very interesting question in response to this post. Here's what Scott's wondering:

"How can you go about protesting a first use claim if you're not the one making the claim of prior use, but you simply have material knowledge of it (heck, so does Google) and don't want to see a generic word hijacked as a mark? Last August, it seems that filed a trademark on the word "webinar" claiming first use in commerce June 6, 2000
. Now I know for a fact that the word was used in commerce before that, because my company was using it, and we borrowed the term from WebEx. I did some searching on Google (webinar + 1999) and quickly found several more examples, including a couple from my employer at the time. I hate to see generic words hijacked like this (familiar with Entrepreneur Media?). What can be done about this?"

Great question, Scott. The USPTO is actually quite good at catching these marks at the gate. For instance, the example you bring up is a perfect case in point. On January 9th of this year, the USPTO issued a refusal based on that the mark is merely descriptive. It's now on the applicant to submit evidence & arguments supporting their rights to registration.

It's my understanding that only those who "believe that he or she would be damaged by the registration of a mark on the Principal Register may oppose registration by filing a notice of opposition with the Trademark Trial and Appeal Board." As far as what the USPTO defines as "damage" – hmm, any ideas out there?

A great lesson here for anyone that coins a catchy name or term is to trademark that sucker right away. A good example of this is mobisodes ®,which is a registered trademark owned by Twentieth Century Fox.A Google ® search pops up 43,900 hits on this term. Now, of course, it's on Fox to protect their trademark

Hope that answers your question Scott! Let me know if I can answer anything else for you!

What factors should be considered in choosing a strong trademark?
What are some common causes that the USPTO would refuse a trademark?

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