Forum Moderators: not2easy
Before consulting a lawyer, I was wondering if anyone here is aware of the restrictions on trademarking a company name if it is partially composed of common words. Some fictitious examples:
Toys And Games
Inspirational Short Stories
Rainbows And Leprechauns
Aquatic Sea Creatures
The Fantasy World
The company name I would like to trademark is along those lines. This question assumes that the name is not already trademarked of course.
Any help would be appreciated.
HP
But it will cost you money to even try. Then, once you do that, and you put more money into promoting your trademark, it will be trivial for a competitor to take it away.
Do a search on [generic marks] or [descriptive marks] for more info.
To get your trademark cancelled is basically the cost of filing a motion, and a court appearance by their lawyer.
The safest trademarks are made up words.
Are you saying that even if you have been using the intended mark as your business name, have the domain name and nobody else is using their domains for the same purpose or any other company with that name in it, a potential competitor would still have an easy time taking it away?
Handsome Prince - welcome to webmasterworld!
An invented name (Google, Prilosec, etc.) that hasn't been used before is certainly the easiest trademark. Common words used in a unique way may be trademarkable for highly specific uses even though they are words that appear in everyday conversation (Sprite, Explorer).
The examples in HP's post may be somewhat similar to "Best Buy", two common words forming a commonly used phrase that are claimed as a trademark by the company of the same name. I'm suer the firm's IP lawyers would have preferred that the founders had chosen a name that was more distinctive and unusual. Interestingly, the Best Buy website shows "TM" usage rather than (R) for a trademark that has been registered. A quick look at uspto.gov didn't pop up a registration for the term as an electronics store, although there were plenty of other uses for pretzels, magazines, and more.
One thing that Best Buy has done, and is a good lesson for webmasters, is trademark their domains - bestbuy.com and even www.bestbuy.com. This presumably gives them additional leverage should one of the many other users of "best buy" or a competitor tries to capitalize on their name recognition with a similar domain.
As always, check with a lawyer about your specifics - this is a complex area, and you don't want to base important business decisions on forum feedback. Good luck and welcome to WebmasterWorld, HP.
I am in a similar predicament as HP, and am somewhat inexperienced in those matters.
Paying 335 for a TM application is not that much but, on the other hand it is a lot if it's thrown out the window.
Paying 1G for a lawyer is REALLY a lot to throw out the window.
What would be your advice, even though it comes via this forum :), to go about finding the right lawyer for the right money ...?
In the case of best buy, they claim trademark on their logos, and on their domain names, not on the phrase "best buy". When you go to the uspto site and search on [best buy], actually click on the results to see what is being trademarked.
If they were to try and claim the actual words "best buy", you could probably get somthing that generic cancelled for the price of a nice dinner. And I would hate to be the attorney that approved it when it came time to do the annual job review.
One thing to remember though, just because your trademark is cancelled, it does not mean that you can no longer use that term. All it means is thatyou no longer have exclusive rights to use that term.
I think I will just keep using my domain, a .org, and maybe contact the .com owners, who aren't doing anything with it ..
(These lawyers are sort of the "H & R Block" of IP Law - they are capable of completing the forms if your situation isn't complex; just as you'd consult a CPA or tax attorney if you had a lot of money on the line, go to a conventional IP attorney if your situation is tricky and the trademark is valuable.)
Expect the process to take about a year. I just did one that took about 15 months, which included one request by the USPTO to tighten up the areas claimed.
