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Trademark Registrations / Single or Multiple

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Wstrawberry

Junior Member
What is the name of your state (only U.S. law)? MA

Hi All:

I have a question in regards to before registering a trademark, so I am in the middle of development a new product, however, I am not going to file a patent yet, this will be an apparel item/accessories, I would like to file for a trademark first, due to the product that is still in development. For "example", I am developing baby socks, now lets pretend that NO one has trademark "Baby socks", I would like to trademark that phrase, and that no one can use the phrase "baby socks" to describe their products, there are 2 phrases that I would like to protect, "Baby Socks" and "Socks for babies", now I am wondering if I NEED to register both of those phrases for protection, where does infringment comes in? Does the violator has to violate in exact wording? Or even if they are close to it...."Babies Socks" would that violate?

I am concern I have to register like a dozen phrases just so for proctection...

Thanks in Advance!!!!
 


quincy

Senior Member
What is the name of your state (only U.S. law)? MA

Hi All:

I have a question in regards to before registering a trademark, so I am in the middle of development a new product, however, I am not going to file a patent yet, this will be an apparel item/accessories, I would like to file for a trademark first, due to the product that is still in development. For "example", I am developing baby socks, now lets pretend that NO one has trademark "Baby socks", I would like to trademark that phrase, and that no one can use the phrase "baby socks" to describe their products, there are 2 phrases that I would like to protect, "Baby Socks" and "Socks for babies", now I am wondering if I NEED to register both of those phrases for protection, where does infringment comes in? Does the violator has to violate in exact wording? Or even if they are close to it...."Babies Socks" would that violate?

I am concern I have to register like a dozen phrases just so for proctection...

Thanks in Advance!!!!
First, I will assume you have checked to see that your apparel item/accessory is actually patentable. New products are not necessarily eligible for patent protection and design patents are issued for new, original and ornamental design such as design added to a product or the shape of the product. Apparel items are usually not inventions.

Second, a trademark is a name, slogan or logo used to identify a business, product or service. Trademark protection arises from the use of this identifier in commerce and not from registration of the mark. Registration of the mark is optional (although federal registration does provide some additional benefits to the trademark holder).

Third, your example is not a very good one, because you cannot register common words and prevent their use by others in their common word sense.

Fourth, until you have a product ready for marketing, you can file an application to register your trademark, but it would have to be an "intent-to-use" application and reserve the mark for later use. Your mark cannot be registered, however, until you start using the mark in commerce.

There seems to be a lot of confusion with your questions so you can visit the United States Patent and Trademark Office (USPTO) website at http://uspto.gov or, probably better, you can sit down with an IP attorney in your area for a review of the apparel item/accessory you are thinking can be patented (the attorney can tell you if you have a patentable product) and for a review of the actual trademarks you are thinking of using (the attorney can tell you if they are available for registration).

Good luck.
 

Wstrawberry

Junior Member
Thank You so much for your advice! I really appreciate it, I am just curious, if Paris Hilton can trademark "That's hot" to certain items class, why not "Baby socks", now let's assume NO one has ever trademark "baby socks", why couldn't I trademark that to register with class that's apparel?

Thanks.
 

quincy

Senior Member
Thank You so much for your advice! I really appreciate it, I am just curious, if Paris Hilton can trademark "That's hot" to certain items class, why not "Baby socks", now let's assume NO one has ever trademark "baby socks", why couldn't I trademark that to register with class that's apparel?

Thanks.
You can use "Baby Socks" as a trademark to identify your goods, but if you are marketing baby socks, the trademark would be considered descriptive of the goods and, therefore, could not be federally registered. You cannot prevent others from calling baby socks baby socks. These are common words and anyone can use them.

Now, if you used the name "Baby Socks" as a trademark for, say, a food product or cologne, then the name is not descriptive. It becomes an arbitrary mark and would be a name that the USPTO would accept for registration. An example: "Arrow" is a registered trademark. The mark is used to identify shirts and is thus considered a mark that can distinguish the goods from all others. But "Arrow" could not be used as a trademark to identify arrows. The word arrow is descriptive of arrows and you cannot prevent people from calling arrows arrows. The mark would not distinguish one arrow from another.

Some slogans can become trademark-rights-protected if they become connected in consumers minds with a specific company's goods or services. Until the connection is made in consumers minds (until the slogan gains a "secondary meaning"), the words are not protectable under trademark law. The slogans "Just Do It" for N!ke and "I'm Lovin' It" (for McDonald's) have gained protection because, when these words are said, consumers know what company is being referred to.

Am I clarifying this for you, or just confusing you more? :)
 

Wstrawberry

Junior Member
thanks

That really helped a lot! i think i entirely understand your explanation. Thank you so much! although its very disappointing, now let say if I trademark "The Baby socks" as a slogan to describe my socks for babies..would that work? Thank you!
 
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quincy

Senior Member
That really helped a lot! i think i entirely understand your explanation. Thank you so much! although its very disappointing, now let say if I trademark "The first Baby socks" to describe my socks for babies..would that work? Thank you!
You cannot use "the first baby socks" as a slogan unless yours are the first baby socks ever - which, of course, they aren't. That phrase would be considered false advertising. And (I see you edited your post), while you can use "The Baby Socks" as a phrase, you are best off if your phrase is catchy enough to capture and keep the attention of consumers. Perhaps with a clever jingle to go along with the phrase, you could make it work. :)

If the goods you will be marketing are baby socks, however, you would be smart to come up with a unique name for your product line/company that will work to distinguish your brand of baby socks from all other baby socks. Otherwise, you will need to wait to register your name with the USPTO for the Principal Register. The common word mark must gain a secondary meaning (or be in use for an extended period of time) for the USPTO to accept the trademark for registration.

The best way to get federal protection for your trademark through registration is to come up with a "strong" trademark to start with. The strongest trademarks are generally those that are arbitrary (like Arrow for shirts, Penguin for books, Diesel for clothing) or fanciful (made up words like Kodak) or that suggest what the product is or does without actually describing it (Roach Motel). These are the marks that can be federally registered without waiting for consumers to connect in their minds the trademark with the goods or services.

The weakest trademarks are generally those that are descriptive of the product or service itself (like Baby Socks for baby socks) or descriptive of the location where the product or service originates (Massachusetts Baby Socks) or descriptive of the product or service's creator (Bonnie's Baby Socks) or descriptive of what the product or service does (Baby Socks for Baby Feet).

That said, weak marks can eventually become strong marks, with continuous use and over time, if the name used to identify the goods or services becomes connected in consumers' minds with the one particular product or service. This is what happened with Kentucky Fried Chicken and Arizona Iced Tea and Speedy Printing. But this takes time and often heavy marketing to gain the "secondary meaning" needed for common descriptive words. And, even though these descriptive trademarks have federal registration because they have gained a secondary meaning in the marketplace, the owners of these marks still cannot prevent someone from saying their brand of iced tea comes from Arizona, their chicken is made in Kentucky or their printing company is speedy. The words are still available for anyone to use - just like Baby Socks could be used by anyone to describe their own brand of baby socks.

Did I cover everything? :)
 
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