JSonnabend

[fabricguy]

Hi

I am setting up a clothing label.  The brand name I want to use is a generic term - let's call it "Mommies To Be".  I have registered the company as such and got the domain e.g. mommiestobe.com

I have discovered that another company has a trademark registered that consists of their own company name/brand (e.g. John Johnson's) with the addition of the sub-brand Mommies To Be.  E.g. John Johnson's Mommies To Be.  They operate in similar territory and a similar sector of the marketplace.

I am confused as to whether my generically-named company name/brand is going to infringe on their trademark.   It seems to me that since part of their trademark is a GENERIC term, their protection may only be limited to the FULL trademark but I'm not sure if they get protection against me using the generic term because of the rule about the possibility of confusion that being caused.

Naturally, I am attempting to make my own logo etc. as different to their's as possible to avoid any confusion.

My understanding is that my own protection, were I to register my company name in logo form as a trademark would be limited to that stylized logo rather than the generic name itself, which I am fine with - is that correct?

[JSonnabend]

Why would you select a generic name for your brand?  By definition, it cannot function to identify you, so what purpose does it serve?

For example, if you launch a maternity clothing brand called "Expectant Mother Clothing", how would a happy customer pass along the good word?  "I bought these great clothes.  They were called 'expectant mother clothing'".  The person hearing this then goes to a clothing store and asks for "expectant mother clothing", and the sales person directs her to the maternity clothes (that is, the expectant mother clothing).  Compare that with someone asking for "Levi's" or "Lucky Brand Jeans".

Perhaps your mark isn't really generic?

- Jeff

[fabricguy]

Hi Jeff, many thanks for responding,

The brand will be trading online so in your example I would hope the customer would say they bought the items from "expectantmother.com".  The brand name I have is generic in that sense.  If the brand ever went to stores I guess "expectantmother, the brand", although I appreciate your point about brand-strength there.  Meanwhile, there's a trader out there who has the words "expectant mother" tied up in a registered trademark, as in my earlier example.

From your reply should I understand that whether or not the term I am using is truly generic is going to be the key factor?

[JSonnabend]

Well, if the other party has the mark registered, by definition it is not generic (assuming the Trademark Office is correct -- registrations can be canceled if they are later deemed generic).

"Generic" marks in domains received some attention a while back.  I seem to recall a whole hullabaloo around "drugstore.com", but a quick TESS search didn't show any relevant registrations.

The strength of a "generic" domain is not as a mark, but as an address.  For example, "stamps.com" will never get a registration on "stamps" (or even "stamps.com", I would think, unless the law possibly changes, but I digress).  A competitor in all likelihood could start a "mystamps.com" or "buystamps.com", but the "stamps.com" domain would still be valuable, as it's easier to remember than the other examples.  In some respects, this is a function of allowing registration of "generic" domains, and people can remember the generic terms because they are what they are, so to speak.

- Jeff

[fabricguy]

Okay.  I guess that since the other company has been allowed to register, as part of their trademark, the group of words I want to use, then I have to consider them non-generic at this time and therefore it would be potentially hazardous to use that exact group of words appended by .com.

Thanks for your advice.  This is a useful site.

[JSonnabend]

Or you could have a qualified TM attorney look into this for you.  Your choice.

- Jeff

[Kaitlin]

I agree with Jeff that if you're treading at all close to the line, like it sure seems you are, you really need to speak with a trademark attorney about your specific facts.  (And you are quite right not to set out the real name here.)

But I'd also like to underscore Jeff's query as to whether your name is truly generic.  In your example, "motherstobe" would be descriptive but not generic for clothing.  It would only be generic for selling pregnant people. 

[JSonnabend]

Kaitlin's analysis is not entirely correct.  If the "descriptive" portion of the mark is understood to generically refer to the class of goods, then it is generic, not descriptive. 

For example, the term "maternity" isn't generic for clothing, it's generic for, well, pregnancy.  But "maternity clothing" is understood to generically refer to the class of goods.  Thus, "maternity" in this context is generic.

Same would likely be true, for example, for "sports car" or "coffee cup" or "picture frame".

Of course, one can always argue the class vs. description of use, just as one can argue descriptive vs. suggestive.  Such are the gray areas through which lawyers pay their mortgages.

- Jeff

[Kaitlin]

Thanks for raising the point about class, Jeff.  So do I correctly understand that the PTO would likely consider the noun "motherstobe" (or mommies to be) used alone to be a generic term and incapable of being a mark as applied to anything pre-natal (fetal vitamins, obstetrics practice, foot stools for swollen feet, etc.), and so incapable of secondary meaning in any use relating to pregnancy?   
Curious, because the "maternity" example isn't exactly on all fours, since it is an adjective, not a noun as in "motherstobe".  Hmmm.  Maybe a better example would be the noun "MyDoggie" as applied to dog dishes -- that one would be on "all fours" I guess..... 

[JSonnabend]

"all fours", dogs, very funny.

I don't have an opinion really on "mommystobe", I'm just pointing out the issue. 

As for adjective vs. noun, I'm not sure it matters.  How about "screen wipes"?  I think that was actually decided to be generic for cleaning cloths for monitors, even though "screen" isn't generic for wipes.

- Jeff

[Kaitlin]

As for adjective vs. noun, I'm not sure it matters.  How about "screen wipes"?  I think that was actually decided to be generic for cleaning cloths for monitors, even though "screen" isn't generic for wipes.

I could see the term "screen wipes" being held generic because, "screen" together with "wipes" makes a generic combo term. 
But I wonder if there were wipes just called "screens".... would that be treated the same way? 
...And what about "Duck" brand duct tape... which when used with the word "tape" sounds exactly like the generic term for the product.
(Sorry to seem to be obsessing over this.  Have run out of ways to count how many angels can sit on the head of a pin, and inquiring minds want to know! )

[JSonnabend]

No such generic thing as "duck tape" (unless you're mending torn mallards).  The product is "duct tape", and the owner of the "duck tape" brand has sought to capitalize on that, I believe.

- Jeff

[Kaitlin]

That's just ducky.  But the point is that when people ask for "Duck tape" it sounds like they're just saying "Duct tape".
While I suppose the sound-alike argument more properly belongs to a likelihood of confusion analysis, my instincts say it should cross over to generic sound-alikes as well. 
E.g., if I wanted to use the brand name "Shuze" for footwear.  Would you say that should be considered generic or would it get a pass because of the spelling anomaly? 

[DogDayPM]

That's just ducky.  But the point is that when people ask for "Duck tape" it sounds like they're just saying "Duct tape".
... my instincts say it should cross over to generic sound-alikes as well. 

I was kind of thinking the same thing, having spent a lot of time in Foxworthy Country (where you actually see written advertisements for "duck tape", and which are NOT referring to that company's brand).