rocknbil - 7:19 pm on Jul 22, 2010 (gmt 0)
Well, I think you need a different lawyer. I wouldn't give up on this and schedule out some time to put into it.
You can't trademark specific words, but you can trademark words that are by definition "non-words" like SealAWidget or something. You can trademark phrases, but it gets into areas that are often contestable.
I trademarked someone's logo and here's my experience. I am not a lawyer but the online trademark process is very specific and it won't let you "mess up." We trademarked a mark *and* a specific phrase, her company name. Part of the registration is that it's only registered with the two together, one without the other is NOT registered. You need a separate reg. for each.
Any combination of phrases that come close are contestable by her (now.) That's a whole different gray area though, and you have to police it yourself or pay someone to do it. That is, someone can come in and apply for a TM that's infringing. Exact matches are usually flagged right off and you can't continue. If it's not an exact match but close, and we don't catch it during the publication period and it gets registered, now you're looking at muchos dinero to get it repealed. Oppositions that are deemed valid during the publication period don't cost you anything other than filing fees, if you can prove the infringement (well, unless you use a lawyer to oppose.)
Here's the rub, what a lot of people don't know: once you get your application straight, a trademark lawyer is assigned to your case for review. So it's going through a lawyer ANYWAY. If they find anything too gray, they will return it as not acceptable without modification, and they will point to the documentation, without further elaboration, which is why lawyers are needed here. Ours was rejected twice, because I didn't grok the language. It was something like, "specify the colors of the mark in all aspects (paraph.)" As it turned out, I hadn't specified the colors that would apply to the typography. A change of three words in the app. and it was accepted.
Once accepted, it is published for opposition. During this period, had there been any previous mark holder with a similar mark (there wasn't,) they could have contested it and off you go to court (or withdraw the claim.) Once the publication period expires, it's registered, you can use the circle-R with pride (and stand behind it, unlike most of the marks you see,) and you receive the 10 year cert. It takes about a year to complete.
Having a lawyer doesn't speed up the process, it just means you don't have to know what the legalese means. Having done it, I'm glad I did, though it hurt my head, a lot. :-)