What is the uniqueness requirement for trademarks and brands? I thought they had to be wholly unique, but I’m finding some results that suggest the contrary. Also, what are the rules on trademarking a word that is already common knowledge? I know nothing about this, so I thought I’d ask here.
I recently came up with a perfect name for a product/company (let’s call it Foobus) which is auspicious and ideal for a variety of reasons. To my dismay, when I search on the USPTO site, I see that about 20 other entities have registered the verbatim name Foobus, and about 10 others are Foobus Industries, Foobus Services, Foobus Software, Foobus Hardware, etc. I’ve never heard of any of them, and most are abandoned.
So do I have a shot at registering my product as just Foobus? I’d intuit that I could, since this chosen name also happens to be the name of a minor deity in a small corner of a world religion. The word is already in common use, so I don’t see that anyone could lay exclusive claim to it.
Any thoughts would be appreciated. I’m just looking for general concepts, not specific advice.
IANAL, but delve into intellectual property issues because of the business I’m in, and I find it fascinating.
You may have noticed that some trademarks have the “registered trademark” symbol ®, and others “tm”. There can be several reasons for this, but one of the possible reasons is that the USPTO won’t give common words and phrases the top-tier Registered status.
So, I could produce Awfully Good brand cookies, and could claim “Awfully Good” as my trademark (with some assumptions), but it is doubtful the USPTO would give me the top Registered status for that, simply because it is a common phrase.
There is a separate issue of claiming a non-text logo as your trademark.
General concepts. Well, then, let’s start at the beginning.
The purpose of trademark law is consumer protection, in that consumers should be able to identify the source of goods or services that they purchase or otherwise receive. Additionally, having a unique and clearly identifiable trademark enables suppliers of such goods and services to stand out in the marketplace, which helps them both attract customers and get repeat business.
That being said, the trademark waters aren’t always crystal clear. If the general name “Foobus” is in use by a large company that went through the expense and bother of registering the trademark, you very likely won’t be able to use that exact name. But, you may be able to use the name if you alter it a bit, so long as it’s clear that your intent is to distinguish yourself from others with the same name. Thus, you see “Foobus Software”, which is distinct from the general “Foobus.”
In particular, it helps if you’re in a completely different line of business from anyone else using the mark. Let’s say you want to use “Daisy” for your line of fine gentlemen’s ass-scratchers. Because your area of business is clearly distinct from the dairy company “Daisy”, they likely wouldn’t be able to successfully sue you for trademark infringement. On the other hand, if your name is “Dolby” and you want to go into the music business, you may have a fight on your hands (see Thomas Dolby).
So, with that in mind, weigh whether the mark you want to use is a good idea, or whether you should perhaps modify the name in some way to make it more distinctive. “Distinction” is the key; your use of the mark has to stand out clearly from all others.
Thanks for the answers, they were very informative.
Follow-up question… I gather that this deals primarily with names of products and services… does this have any bearing at all on a company name? For example, can I call my company “Microsoft”? How about “Microsoftly” or “Microsoft Software”? Can I do it if I don’t market my products with the Microsoft-like name? Obviously I wouldn’t be that dumb, I’m just trying to understand what sorts of infringement might be claimed.
Anybody can CLAIM any sort of infringement. The question are will it stand up in court, and how much money are you willing to pay to defend yourself?
A company name can be a trademark if it is distinctive enough. A big well-known company like Microsoft will get a wider umbrella of protection than a tiny start-up. The primary question is always “Is the consumer likely to be confused?” Microsoft is so well-known and their brand is so well-established that you’re likely to get in trouble even if you tried using a similar name for a non-computer product. Starting up a cola company with the name “Microsoft Drinks” would probably get you sued and you’d probably lose, even if you didn’t copy the Microsoft logo.
Indeed. Remember the kid named Mike Rowe, who (if I remember correctly) got the domain mikerowesoft.com? The Microsoft corporation claimed infringement. They ended up settling out of court, but any bets on who would have won if it had gone to trial?
I actually have a trademark, officially registered with the USPTO, for one of my software products. I did it myself on their website. It really isn’t that complicated to do yourself, if you’re careful. The one place that most confused me was in providing the sample. They say they want a picture of the mark on the packaging, but since my product is electronic only, there is no packaging. In my first submission, I sent a picture of the logo for the product, which included the textual name (the mark) underneath. They didn’t like that, but once I sent a screenshot of the software that had the name on the title bar, that seemed to satisfy them.
Just an FYI/observation: during the Barcelona Olympics in 1992, Nike wanted to be a sponsor, but got held up because a Spanish (sockmaker, IIRC) business had registered “Nike” (the word, not the swoosh) in Spain in the 1930’s, and wanted moolah. Of course, this involved international law, so it may not apply. Best wishes for Foobus, CR!
Not so fast. Some of those answers were very wrong.
IANAL, but I have registered several trademarks, and have been threatened with a (baseless) law suit for trademark infringement. So I have had the opportunity and need to become quite familiar with U.S. trademark law.
First of all, most of what you need to know about trademark law is here: USPTO Trademark FAQ.
Let’s get some of the misinformation out of the way.
No disrespect, Raza, but this is all wrong. The USPTO does not grant different “tiers” of trademark status. The ® mark indicates that the mark is officially registered with the USPTO. This is the only status the USPTO grants.
The “TM” mark can be used by anyone to indicate that they are claiming a trademark, either without filing for official registration, or while the application is pending. Cite:
As far as the rest is concerned, you’re a little closer to the mark, but there is no problem with registering “common phrases” as such. The basic criteria are that the mark cannot be “primarily merely descriptive,” “primarily geographically descriptive,” “primarily merely a surname,” or “ornamental.” (Cite.) So you couldn’t trademark “Chocolate Chip Cookies” or “Copper Pipes,” but I suspect “Awfully Good” brand cookies might pass muster.
Max Torque’s post is basically correct, except that he blurs the distinction between what is technically permitted under trademark law, and what one is likely to be able to get away with, particularly if the holder of the similar mark has deep pockets.
Under copyright law, you may have the same mark as another company, as long as you are in different businesses and there is unlikely to be confusion between the two. A now infamous example: back in 1976, Jobs and Wozniak were able to register their little company as Apple Computer despite the existence of the Beatles’ Apple Corps, because at the time there was no connection between personal computers and making and distributing music recordings. (Things change.)
However, there are many, many cases of companies in different lines of business having the same mark. (Unfortunately, I’m drawing a blank on any notable examples at the moment.)
That’s not to say that you could register the “Coca Cola Plumbing Company.” Although, as Max says, the original intent of trademark was consumer protection, in recent decades trademark law has been seen (and treated) more as a property right of the holder. This has led to the principles of “famous” marks and “dilution.” In short, certain marks are so well known that any other use, even in totally unrelated industries, would weaken them and harm the holder. (More about famous brands and dilution here.)
The holder of an existing mark can petition the USPTO not to grant the mark to you while your application is being evaluated. But if the USPTO goes ahead and grants you the mark, the other company can sue you for infringement anyway. The granting of the mark to you by the USPTO does not protect you from this.
So when Max says, “If the general name ‘Foobus’ is in use by a large company that went through the expense and bother of registering the trademark, you very likely won’t be able to use that exact name,” he doesn’t mean the USPTO is necessarily going to side with that company just because they registered first, he means that the existing Foobus may not make it easy for you.
This is what happened to me. I filed for a mark that was approved and registered. Two years later, I was threatened with a suit alleging infringement and dilution of a famous brand. My lawyers were extremely confident that I would have won the case, but it would have cost me about $400,000 to go to court. So I settled and changed my business’ name. (As an indication of how good my case was, the settlement entailed the other company paying me.)
Now to the OP’s actual question: based on what you’ve said so far, things look pretty good for you. First, you can forget about all those abandoned marks. They’re dead and buried and can’t harm you (probably). The fact that it is the name of a minor deity is good, for the reason you mentioned: no one has an exclusive claim to it. The fact that there are several other distinct companies with the same name is good, because it means that none of them has succeeded in preventing any of the others from using the mark. The fact that you have never heard of them is also good: they may not have a “famous” brand claim.
So as long as you’re not going into an area of business that is related to any of the existing trademark holders, there’s a good chance the USPTO will grant you the mark. And as long as none of them is particularly ambitious or litigious, you have a fair shot at being able to use the mark without being hassled.
But when it comes down deciding to register or not, don’t accept advice from a bunch of anonymous idiots at an online forum. Talk to a lawyer with intellectual property experience.
Thanks for the corrections, commasense. I probably will need to consult an IP attorney. My product is a specific type of software product. It seems there is a Spanish software company named (not really) Foobus Inc, but they do not make the type of software as my product, and they don’t call any of their products Foobus as I intend to. And, bizarrely, I’m finding references that some other unnamed company produced a Foobus software product exactly like what I intend to sell, but apparently it’s a dead product from 15 years ago that was never trademarked as Foobus or any other name (at least in the US). So I have 2 different ends of the spectrum to examine here.
There are plenty of products which have the same registered trademark but in different fields. The most obvious being Apple Corp and Apple Computer. It’s just a good thing that the latter’s business doesn’t involve music in any form. :rolleyes: (How the hell did they manage to get away with that one?)
Also off the top of my head, another example - Bounty chocolate bars and Bounty kitchen towels.
And when I was a kid, there were two entirely different types of sweets called Refreshers - one was a penny chew, one was a roll of fizzy sherbet-style sweets. AFAIK, both still exist. Not sure how that worked.
One thing about which I know little or nothing is how trademark issues are handled internationally. I suspect the USPTO only checks applications against marks registered in the US, and that you’d have to register separately in the EU or other countries to get full international protection. Meaning that if the Spanish Foobus doesn’t have a US trademark, you should be able to register it for use in the US, at least.
But as I said, I’m speculating. Check the USPTO FAQ and your lawyer.
On the other hand, I seem to recall that the IOC bullies local Olympic-named businesses around whenever they come to town.
Here in SE Michigan, we have all kinds of businesses named Ford, including many that aren’t owned or have any relationship at all to Ford. The Ford and Wyoming Drive-In, for example, being that it’s on the corner of two roads bearing those names respectively.
A business name and a trademark are not the same thing. You can have a business without trademarking it, or a trademark that is different from the business name, e.g. each of the many products a company produces can have a separate trademark. The examples Balthisar gives may be unregisterable for the reasons I quoted above: “primarily geographically descriptive,” “primarily merely a surname.”
There is also a distinction between trademarking the name itself and a specific graphic or artistic treatment of it. For instance the Coca Cola Company holds the trademark on the name Coca Cola, but also on the famous script-style version of it (and many other forms as well). The Nike “swoosh” is a trademarked symbol, as are many logos. Each of those trademarked forms has to be registered separately.
In the case of a graphic trademark, I believe that protection extends to competing uses that too closely resemble the trademarked form.
Ironically, while going through the USPTO Web site to verify the post above, I learned that, contrary to my previous understanding, one has to renew trademarks. I thought they remained valid as long as you continued to use them in business.
You have to file between the fifth and sixth year to assert that you are still using the mark, then in the tenth year you have to renew them. This alarmed me, because I couldn’t remember when I had registered my mark, but I thought it had to be more than six years ago.
So I quickly did a search on my mark and found that it had been registered on June 4, 2008, six years ago yesterday! The good news is that the USPTO gives you a six-month grace period on filing. The bad news is the grace period fee doubles the regular fee. So if I had filed yesterday I would have paid $200. Today I had to pay $400. :smack:
But at least I didn’t accidentally let my mark lapse, thanks to this thread. I don’t know what would have happened if I hadn’t found out about this until after the grace period. Probably nothing incredibly serious. Fortunately, no one else out there is trying to poach my trademark, nor is such a thing likely.
The Olympics are kind of a special case; they have no less authority than the United States Code to back them up. They don’t have a mere “trademark”, they’ve got a freakin’ statute, just for them. Watch any side-advertising that has to do with the Olympic Games, such as McDonald’s tie-ins or the like. In the bottom corner, you’ll see a cite to the relevant section of the US Code, which McDonald’s put there to inform the world that they have permission to market something “Olympic”, but the mark doesn’t belong to them.
Hey, this thread accomplished something useful! Glad you’re keeping your mark, commasense, and thanks for not being too cruel to my quick-and-dirty generalizations about what trademark is all about. heh.
They didn’t. Back when Apple Computer first entered the music-related waters, Apple Corp cried foul. Apparently, the two had an agreement from way back when that Apple Computer wouldn’t ever do anything in a musical field. The two then reached some sort of out-of-court settlement that allows Apple Computer to dabble in music with Apple Corp’s blessing.
Wow, I didn’t realize that either. I’ll have to give myself a reminder to do the renewal after five years. Thanks, you may have saved me from losing my trademark!
Huh. I stand corrected, and admit I had never heard of the two registers. I took the section I had quoted to mean that you could use the “TM” mark without filing (which I think is true), and thought that all filings result in a registered mark ® or nothing. Thanks for fighting my ignorance.
Holy cow! If I read that statute right, I can only ever possibly use the word “Olympic” in certain parts of Washington state and under certain conditions! I can’t call my restaurant (in Greektown) “Olympic Gardens” or even announce that my other-named restaurant serve “Olympic Proportions™.”