Is this a trademark infringement?

Factual Questions
1

Hi, I know you’re not my lawyer, and you’re not giving legal advice. Here’s my question…

I live in the United States. I applied for a trademark. Let’s say the trademark was for “RecordYourMemories”, and I applied for it on May 1st, 2007 and it was in use in commerce on Jan 1, 2007. Let’s say I produce videotapes for people with their life story and the trademark was a word mark only. The USPTO put in a pseudo mark for “RecordYourMemories”, so that if you search on “Record Your Memories” my mark comes up in the search.

Now ABC Company also applied for a trademark. ABC is a very large company not based in the United States. Their trademark is “ABC Record Your Memories” with a small logo of ABC Company next to the words. ABC Company makes blank videotapes. ABC company applied for their trademark after I did (let’s say May 4th) and they didn’t previously use their mark in commerce. I think because of the closeness of the applications, when they did a search on “Record Your Memories” my mark didn’t come up because it wasn’t yet in the system.

To complicate matters, ABC Company spun off a portion of their operations to XYZ company, and if you go to XYZ company’s website, they prominently use “ABC Record Your Memories” with a little note at the bottom that "XYZ is the exclusive licensee of the “ABC Record Your Memories” brand.

Both trademarks are going through the process, but mine is scheduled to be published in the official gazette later this month to undergo the 30 day period where damaged parties can try to oppose it.

ABC Company received an office action awhile back, with some information requests that they had to re-submit, but there was also this language:

I guess my question is, what would you do if you were me? Should I wait until the trademark is registered and see if ABC or XYZ company is still using it? In your informal, non-binding opinion, is there a good argument that the two marks are similar enough? And how much would it cost me to pursue this? I’m a very small operation, they are a very large company.

Thanks, for your thoughts (again, I know you’re not my lawyer)…

2

IANAL but have studied trademark law a little.

If your example accurately portrays the two trademarks as both being significantly literal versions of the thing you are doing, ie recording your memories, then I think you have a difficult argument.

A trademark, ideally, ought to be a label that identifies the source of a product, and be distinct from the label that describes the product. For example, I like those little round chocolates with the soft filling, and one popular brand is “Lindt”. I don’t know what a Lindt is supposed to look like. It’s a meaningless word as far as I can tell. We have to hear “Lindt truffles” to think it means a brand of truffles (understanding “truffles” already means soft-filled chocolate balls").

Your trademark confuses a description of the product with a meaningless unique label.

I think “ABC Record Your Memories” sounds like a defensible trademark, if the “ABC” part is unique and nondescriptive.

Since the products would record your memories, nobody should be able to protect the phrase “record your memories” in the context of their use.

3

Thanks for your comments, Napier.

Perhaps I could have uses a better example than “Record Your Memories”. It’s probably closer to something like “Memories On Record”, which is a bit more abstract

Are you saying a more descriptive mark is harder to get approved by the USPTO, harder to defend, or both? Thanks.

4

If it is any help -

The company I used to work for, XYZ environmental, inc, applied for their trademark name like this -

[quote]

NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE “ENVIRONMENTAL” APART FROM THE MARK AS SHOWN

It was explained to me that trying to claim exclusive rights to "environmental’ would be extremely difficult and time consuming. The trademark includes the whole phrase “XYZ environmental, inc.” and the design and colors.

As a TM, “XYZ environmental, inc.” would not be confused with “ABC environmental, inc”. If someone decided to call their company “Environmental, inc.” they would have a near impossible time of stopping other environmental companies from using environmental in their titles.

You can look up the TM at the USPTO search page to see how they applied for their TM. My guess is that they applied for it as ABC Record Your Memories with no exclusive claim to the “record your memories” phrase.

YMMV IANAL IAMNAPL

5

>Are you saying a more descriptive mark is harder to get approved by the USPTO, harder to defend, or both?

I’m not sure what approval means in the context of the USPTO. When they award a patent, the USPTO has already done searching through other patents and technical examination with regard to the technical merit of the content of the patent. This isn’t the case with trademarks. I believe you can create any trademark you want, and that putting the little superscript TM mark or calling it a trademark is all you have to do. The purpose of a trademark is to identify whom a thing came from, and so it is like a signature, which also has some legal status without having been preapproved by some government agency.

You can register a trademark, and then you can use the R in a circle. I guess doing this strengthens your claim to the trademark, but I’m not sure, and I don’t know what work the USPTO does (if any) to accomplish this registration.

And I don’t know if it is harder to register a trademark that is descriptive.

But, the point is, the entire purpose of the trademark is to make it clear what the origin of a thing is, and not what the thing itself is. It’s expected to be unique in the context of the business and use of that thing, like “Lindt” is in the world of chocolate truffles, or “Quasar” is in the world of television, or “Subaru” is in the world of cars.

Lindt and Quasar and Subaru would be considered strong trademarks because it is easy to keep clear that they describe sources and don’t describe things.

“Kerosene” is an example of an old trademark whose owner let get confused with the stuff itself, and so the trademark was lost, and now anybody can formulate and sell kerosene.

“Coke” is an example of a new trademark that is treading on thin ice in this regard. I bet the Coca-Cola company gets quite a lot of sales from customers saying “give me a coke” when they mean “give me a cola”. But that company is rich and vigorous enough that they probably will stay barely safe and keep their trademark.

So, certainly, you should not be able to claim and keep to yourself and defend a trademark as descriptive as “Record Your Memories”. I don’t know if “Memories On Record” is nondescriptive enough. Perhaps a good test would be whether the term has been used in the context you propose. When I google that phrase as a phrase I get 1050 hits (and 15,000 for “record your memories”). It’s not hard to imagine that some of those relate to the product you want to trademark. If I google “Patterson’s memories on record” I don’t get any hits at all, and a trademark like that would be much easier to defend.

Mind you, I don’t know what you’re really selling, I’m just going along with your example.