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Lawyer help needed / Trademark Question

Discussion in 'Other Off Topic Forum' started by PeterS, Jun 1, 2004.

  1. PeterS

    PeterS Three Time F1 World Champ
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    Jan 24, 2003
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    It looks like one of my competitors (A multi-million dollar company) has not filed for a trademark on their company's 'catch phrase' for their products. I did a USPTO search and came up with no applications for the phrase.

    My thinking is that I can file a trademark application for this phrase and use it for my company. If my competitor wants to use it, they can buy it from us.

    Am I correct?

    I look forward to replies.

    Thanks, Peter
     
  2. Stackhouse

    Stackhouse F1 Rookie
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    Feb 14, 2004
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    What’s the phrase? I’ll take a look at it for you…wink… wink… nudge… nudge.

    This isn’t gospel but I’m fairly sure of this. If you competitor is currently using this “slogan” in any form of media. The creator will have an inherent right to copyright. It would be wise for him to file but not necessary. They will also be able to contest your right to claim the “slogan” and most likely succeed. If however you can produce documentation that you were the first one to use the “slogan” you may be justified.

    Now my .02.
    Starting a pissing match like this may be more of a hassle than anything. You don’t want to spend $$ on a trademark that can be easily dismissed and awarded to your competition. If you want to get down and dirty PM me with details about your competition and I can provide some ways of getting under their skin.

    PD
     
  3. George H.

    George H. Karting
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    Sorry, Peter. Your competitor will have "common law" trademark rights even though the mark is unregistered. Furthermore, an applicant for trademark registration must state that, to the best of his/her knowledge, no other person has the right to use the same mark in commerce.
     
  4. cohiba_man

    cohiba_man Formula Junior

    Jan 23, 2003
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    Since its been established that you probably can't do it, is the slogan "Ready to R___"?
     
  5. zjpj

    zjpj F1 Veteran

    Nov 4, 2003
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    I love IP.

    A trademark is a word, name, symbol, device or combination thereof used to identify and distinguish goods and services of one from the goods and services of another. More simply, it identifies the source of goods and services (i.e. Nike swoosh) It gives you the right to prevent others from using it if such use would create a likelihood of confusion.

    Most importantly in your case, a trademark applies automatically in use in commerce. It can also be registered. You can use TM symbol to assert a trademark, or the R symbol to show that it’s registered, giving greater notice (of course, a court can always come in and eliminate registered TM.) BUT: you do not need registration to sue.
     
  6. zjpj

    zjpj F1 Veteran

    Nov 4, 2003
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    HOWEVER, I should also say the following. It depends how specific the phrase is. Think of this most vital point - the "liklihood of confusion" issue. But, per the "Polaroid" factors, the original mark can't just be some generic mark. This is measured by the spectrum of distinctiveness, from most distinctive to least distinctive:
    1. Fanciful: made up specifically for the trademark
    2. Arbitrary: take an already known word and apply it in an arbitrary way.
    3. Sugesstive: per Abercrombie case: suggestive if it requires imagination, thought, and perception to reach a conclusion as to the nature of the goods.
    4. Descriptive: per Abercrombie case: descriptive if it conveys an immediate sense of the ingredients, qualities or characteristics of the goods. Can include a geographic name, for instance.
    5. Generic: Generic term can begin life as coined term but has passed into common usage to identify a product, such as aspirin. I.e. through consumer use- i.e. becoming a descriptive name of an article or substance. If it becomes generic, they lose trademark protection. Also, it can be a commonly used term prior to its association with products at issue. Ivory soap example shows that what can be generic in one case can be distinctive in another.

    1,2,3 are inherently distinctive.
    4 is presumptively non-distinctive, but you can acquire distinctiveness by showing secondary meaning, which is “acquired distinctiveness,” such that over time, the mark becomes distinctive, which means that the consumer sees it as referring to a specific distributor. This meaning must overtake / eclipse the primary descriptive meaning, such as Philadelphia Cream Cheese. Also, if you have the trademark for five years and it has not been successfully challenged, then it can never be challenged for descriptiveness.
    5 is not eligible for trademark protection

    So, look, if this slogan is something like, "We are the best," then it wouldn't be possible to trademark it. The phrase will have to in some way be particular to the company, to take on a meaning that people associate with that company. In BOSTON BEER COMPANY V. BOSTON BEER WORKS, the court found that a geographic mark and description of product, without more, without a mark that makes it distinctive, does not warrant a trademark. Likelihood of confusion is irrelevant when no trademark exists.

    So, basically, it depends on what the phrase is. But, the short answer is what I stated above. He doesn't have to register it to have a trademark and you can't just come in and swipe it!
     
  7. imperial83

    imperial83 F1 Rookie
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    Besides do you really want to piss off a company that millions of dollars at their disposal. Not smart.
     
  8. PeterS

    PeterS Three Time F1 World Champ
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    Then why in the hell did Intel pay for a trademark for 'INTEL INSIDE'? This makes no friggen sense to me. Why did I pay for the mark PERFORMANCE RE-ENGINEERED ?
     

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