Print

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

[mattthew]

I have a registered company name trademark and tried but failed to get a trademark on a product name, due to another trademark being similar.

Currently I have this on the package:
COMPANY NAME (R)
PRODUCT NAME TM

What are my chances of getting a trademark on "COMPANY NAME PRODUCT NAME" all together since this would be more unique?  Though if they see my first application it might raise an eyebrow.

If I can get a trademark on "COMPANY NAME PRODUCT NAME" all together can I put this on the package:
COMPANY NAME (R)
PRODUCT NAME (R)

The second (R) being there for the combination, though it would obviously appear as though I had a registered trademark on just the PRODUCT NAME.

Not trying to be sneaky or anything.  The reference cited against my first attempt was not someone I compete with.

Any assistance would be much appreciated.

[Kaitlin]

Much depends on the reason for them not being willing to register "PRODUCT NAME."  But if by "PRODUCT NAME" you mean the brand name for your sales of that product, you may be able to register the combined mark -- probably while disclaiming protection in the "PRODUCT NAME" portion -- assuming "PRODUCT NAME" isn't actually in conflict with someone else's mark or misleadingly misdescriptive. 

All such a registration would entitle you to do, though, is to put one R-circle next to the entirety of the name.  There's no distributive* property to trademarks.  You don't get to break down the components of a registered mark and treat each separate component as a separate registered mark. 

(*Patent/math folks, have I go my "distributive" property reference right? )

[mattthew]

Thank you so much Kaitlin.

The conflicting mark is descriptive of what the product does so I'm very surprised they were able to register it.  To make a few made up examples it would be like a blender with the trademark "chop" or a kite with the trademark "flyer".  In this example my tradmark would be "deluxe chop" or "jumbo flyer".  It was rejected for being readable as part of the conflicting product line though it appears below my company trademark, like "Matthew's Own"  "Deluxe Chop" where my competitor sells a product called simply "Chop".

So I take it if I can get the combo that even though I have an existing trademark on "company name"  I SHOULD just have:
Company Name
Product Name (R)

My packaging has some space between the two so  I'm thinking I can just get it a little wrong and no one will care and put:

Company Name (R)

Product Name (R)

Since "Company Name" is already registered it seems odd to use it and not put in the (R).  Not really the distributive property, and you did use it right, but more like Coke having Coke Zero if  they couldn't trademark "Zero" because there was a coffee called "Zero" but could get "Coke Zero" as a soda trademark.

Thanks again.

[JSonnabend]

The focus on where to put the circle-R is misplaced, I believe.  You should focus on two things.  First, what are your marks?  Second, do your marks conflict with previously existing marks?  Once you have made those determinations, you can map-out a cost effective registration approach.

From the one comment you made, I fear your model brand conflicts with a senior mark.  Consider the following hypothetical: a manufacturer of mp3 players called PRIM comes out with a new model player called the PRIM IPOD DELUXE.  Is the IPOD DELUXE model name OK?  I think you know the answer.

- Jeff

[mattthew]

Jeff,

Thank you for that excellent analysis and yes the title of my post should have been about the registration of a more verbose mark when a shorter one failed.  I guess there is a good chance I'll get a rejection again but that I may not because:

The senior, possibly conflicting mark is a four letter word related to what the product does.  For example a blender called "Chop". (nothing like IPOD or KODAK.  It is a word that describes what the product category does, like a blender called "chop" a car called "mpg" or a sweater called "warm")

My original attempt was for the "Power Chop" blender as an example.  This combined mark attempt would be for the "Matthew's Own - Power Chop" Blender.  The hope being that this would not be viewed as being likely to be confused with the "Chop" as it doesn't sound as much like a subdivision of the "Chop" line of products.  I can see where adjectives alone attached to a single word already trademarked would reasonably be confused as part of a product line, like sizes or editions.

My main hope is that the claim the senior mark can have to anything using this word seems unreasonable given it's generic nature.

Thanks again,
Mattthew

[JSonnabend]

If the portion of the senior party's "mark" is merely descriptive, then you are free to use it.  That would be akin to using PRIM MP3 DELUXE, not PRIM IPOD DELUXE, to continue my hypothetical.

- Jeff

[mattthew]

Jeff,

That's good news and thanks again.  It's not as easy as the word being descriptive of the object itself, like MP3 for an MP3 player, in which case I doubt they could trademark that at all.  The senior mark is a word that describes what you'd use the object for, like an MP3 like called "shuffle" or "library", or again a blender called "chop" or a scissor called "snip".

I guess I'll see if I can get the combined mark through without complaint and if I have to I'll argue that it should be allowed as the senior mark is a descriptive word.

Thank you,
Mattthew

[JSonnabend]

Bear in mind that even if you get the mark through, the other side might still sue for infringement and/or cancellation if they think your use infringes.  If they do sue for infringement, the registration would be good evidence, but not conclusive evidence, that your mark does not infringe theirs.

- Jeff

[mattthew]

Jeff,

To be honest I'd only been thinking of having more legitimate looking packaging but that is a much better reason to get the mark.  I don't think they should sue because they don't have the same customer base or product category, but I'd hate to find out they want to anyway.

I'm going to give it a shot and I'll try to post my results in 6 months.

Thank you!
Mattthew

[JSonnabend]

Matthew, one final word, because it sounds to me like you are approaching this with a fundamental misunderstanding of TM law.  You do not "get" a mark by registering with the TM Office.  Having a registration gives you no shield against a third party's actions.  So even if you are able to register the mark, it doesn't mean you have gained any substantive right to use it.

What is worse, if you move forward with the mark on packaging, etc., without properly clearing the mark first, you risk action against you.  Successful action by the other side might mean your product in that packaging gets pulled from the shelves and advertising comes down.  If the product itself is branded, they could be confiscated and destroyed.  In that case, all the money spent on the brand is down the tube.

I'm not saying any of this will happen, but you must understand that there is no "getting" a mark in the way I think you think there is.

- Jeff