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Author Topic: Is it descriptive if the underlying product is unknown?  (Read 757 times)

fb

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Our situation with naming and marking our product is that we need to name it descriptively, but, the product will not be known until we introduce it. So is it a weak descriptive mark?

This might be similar to a new type of car tire that has the rubber on the inside and the steel on the outside; it might be marked as "reverse steel treads". It is certainly descriptive if you know what the product is, but such a product does not exist yet until we introduce it.

Would this be a weak descriptive mark?
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Dazed-n-confused

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Re: Is it descriptive if the underlying product is unknown?
« Reply #1 on: 10-03-11 at 11:55 pm »

Our situation with naming and marking our product is that we need to name it descriptively, but, the product will not be known until we introduce it. So is it a weak descriptive mark?


No offense, but you sound like a lot of the marketers I work with.  They latch onto the catchiest little wonderful names and refuse to let go even though the trademark dept tells them that the descriptiveness of the proposed mark means that even if they happen to get it registered here and there (you know, like Bahrain, the Faroe Islands, and Vanuatu), they're just begging to get ripped off by name-alike knockoffs everywhere else because the name is so darned descriptive that most places will refuse to register it, either ever, or only if ## years pass with no confusingly sounding knockoffs showing up in that jurisdiction.

Then, a few years later when we're up to our ears in counterfeiters, the marketers* come crying to the TM dept and say, in woeful unison,

"But-but-but, why didn't you WARN US!".


*Strictly speaking, it's not "the" same marketers, because marketing is a revolving door and turns over about every 18 mos...

(What I'm saying is, try hard to name it something like XEROX...)
« Last Edit: 10-03-11 at 11:58 pm by Dazed-n-confused »
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JSonnabend

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Re: Is it descriptive if the underlying product is unknown?
« Reply #2 on: 10-04-11 at 10:03 am »

To answer you question, it does not matter whether the product is previously known or not.  The question with descriptiveness is not "can you guess the product from the mark," but "knowing the product, does the mark describe a feature, quality or aspect, etc, of it?"  With the proper test in mind, the answer becomes obvious.

- Jeff
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SonnabendLaw
Intellectual Property and Technology Law
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JSonnabend@SonnabendLaw.com
 



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