Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[tarikur]

Question 1) I want to register a slogan like "Second generation _____" where blank could be like cell-phone, TV, social network and etc. Some may not consider the product to be a second generation. So can i register the slogan?

Question 2) Can I register two slogans for the same product?

Question 3) Can I register the file type name of my product. Like microsoft word use the file type name .doc.

[Kaitlin]

The questions would be simple if they were based on a correct premise.  As it is, simple yes or no answers would be misleading. 

Phrases and slogans (although not necessarily what you describe) can be registered as trademarks. 

BUT, you need to know that in the US trademarks (including slogans used as trademarks) are not created by registration, but by using the mark/slogan appropriately.  What is appropriately?  Use as a brand for selling goods or services -- that is, as a mark to show that goods/services bearing that mark all come from a common source -- and without causing a likelihood that customers will be confused between your mark and an earlier user of the same or a similar mark for similar goods or services. 

Whether or not any mark can serve as (and/or be registered as) a trademark depends on a multifaceted analysis involving
1) the nature of the mark itself (e.g., Is it a generic term for the thing sold? Then no can do.  Descriptive of the thing sold?  It's weak as a mark but with use over time it may develop "secondary meaning" and be permitted to stand as a trademark.  Inherently distinctive mark? Pretty much good to go unless you're encroaching on someone else's rights with it.)  and
2) other factors including such things as the kinds of goods/services, the channels of commerce, and the sophistication of the consumers. 

This is why anyone beginning a business and choosing a trademark would do well to hire a trademark attorney to do a proper trademark search and opinion on the viability of the proposed mark before investing in marketing.  If that's out of the budget, then the business owner should read up as much as possible on what makes a strong trademark and what goes into an analysis of likelihood of confusion (the standard for infringement), then conduct a search of not only the list of registered trademarks, but also of trademarks that aren't registered (because their owners have rights, too) -- bearing in mind in the search that marks that sound similar or look similar or just have the same "commercial impression" can be problems, so you have to run many searches of various spellings of, and maybe even synonyms for, the key words. 

As for whether a file extension can serve as a trademark, I'm not sure, but would expect the answer to depend on 1) whether the extension on a generated file can serve a branding function and, the related question, 2) whether precluding others from using the same file extension would violate antitrust laws by, in effect, using the trademark laws to unlawfully gain an unlimited monopoly over the underlying technology, which monopoly can only be granted (for limited periods of time) by patent or copyright on the software.

[MYK]

Is this even about U.S. law, though?  In most of the world, my understanding is that trademark rights are created by registration.

BTW, as far as file extensions, last I heard, Microsoft had run out of three-character extensions.  That might not be an issue as a trademark, but it would be if you want your software to be usable on an OS that determines file type by the extension, such as MS-Windows.

[artchain]

Is this even about U.S. law, though?  In most of the world, my understanding is that trademark rights are created by registration.

BTW, as far as file extensions, last I heard, Microsoft had run out of three-character extensions.  That might not be an issue as a trademark, but it would be if you want your software to be usable on an OS that determines file type by the extension, such as MS-Windows.

I believe you are right about Microsoft and three-letter extensions.

Actually, both Microsoft and Apple hasve registered developer programs.  Through those programs you can apply for a unique extension, which will not be issued to any other developer.  That's how conflicts are avoided.

[Kaitlin]

Is this even about U.S. law, though?  In most of the world, my understanding is that trademark rights are created by registration.

Quite true that in many other countries registration creates the mark.  It was in case the OP was speaking of non-US law that I qualified my remarks by stating that I was speaking of US practice. 

[Kaitlin]

Question 1) I want to register a slogan like "Second generation _____" where blank could be like cell-phone, TV, social network and etc. Some may not consider the product to be a second generation. So can i register the slogan?

If the phrase in question is seen as being misdiscriptive and misleading the public about the product, in the US and I believe most countries, that would be grounds for refusing to register it as a trademark.  Whether the particular phrase you have in mind can be registered depends additionally on the multifaceted analysis I described earlier.

Question 2) Can I register two slogans for the same product?

Sorry I missed this one.
In the US and I believe most places there's normally no problem in using multiple marks on the same product and registering multiple marks for the same product, assuming each is functioning as a trademark. 

Appreciate MYK's and Artchain's points about the file extensions. 

Actually, both Microsoft and Apple hasve registered developer programs.  Through those programs you can apply for a unique extension, which will not be issued to any other developer.  That's how conflicts are avoided.

I would just remind the OP of MYK's point that this may not be a trademark question and underscore that Artchain is not speaking of trademarks but of other matters governing the use of file extensions. 
I don't know a lot about the underlying technology, but from what I do know  -- that file extensions are functional aspects related to the interaction of the file with a given program -- I would presume that this functionality would preclude them from ever operating as trademarks.  E.g., I can create .doc documents using Open Office or Word Perfect, and Microsoft would not be and should not be permitted to use the trademark laws to preclude either Open Office or Corel from letting their software create files compatible with a Microsoft product.  That sort of control is the province of patent and patent licensing.
Again, I'm speaking of US IP law here, but expect the same principles would operate in most major jurisdictions.

[JSonnabend]

Actually, both Microsoft and Apple hasve registered developer programs.  Through those programs you can apply for a unique extension, which will not be issued to any other developer.  That's how conflicts are avoided.

Not to get too far off topic, but there is not such avoidance of conflicts.  Every installation of a Windows OS can associate whatever extensions with whatever program or programs (there can be multiple) the user likes.  There is also no requirement that extensions be three letters.

- Jeff

[artchain]

Actually, both Microsoft and Apple have registered developer programs.  Through those programs you can apply for a unique extension, which will not be issued to any other developer.  That's how conflicts are avoided.

Not to get too far off topic, but there is not such avoidance of conflicts.  Every installation of a Windows OS can associate whatever extensions with whatever program or programs (there can be multiple) the user likes.  There is also no requirement that extensions be three letters.

- Jeff

That is true, but it would be extremely confusing if many different file types used the same extension.  That's why Microsoft (and Apple) developers are required to register and get approval for the extensions they use (although there is nothing that PREVENTS developers, especially non-certified developers, from breaking the rules).

As for the length of the file extension, originally both Windows and Apple limited extensions to three characters.  But partly because the three character combinations were running out, the companies added support for longer extensions.