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Using Generic Trademarks for same goods and services

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trademark

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

Can generic words be registered as trademarks? If so, can others re-use the same words for offering the same goods and services without infringing their IP. For instance, match.com - can anyone use a similar domain like matching.com, match.net, perfectmatch.com, matchmaker.com, etc for dating sites without infringing on their IP?

2. If a generic foreign language word (translating to "marriage") is used for registering a trademark, can the same foreign language word be used by others for the same goods and services without infringing their IP. If they sue for IP Infringement, is it possible to have their trademark canceled because it is a foreign language word which means "marriage" in English as per their own filing?

3. Is it possible to create a similar-looking website without infringing on their IP and use same generic foreign domain name but a different extension or starting with the same word or containing the same word?

4. If match.com is a valid registered mark, how come perfectmatch.com, matchmaker.com are registered without infringement or being sued?

6. Why do companies register generic terms (match.com) if they cannot be protected from others using it?

TIA
 


FlyingRon

Senior Member
Can generic words be registered as trademarks?
Yes.
If so, can others re-use the same words for offering the same goods and services without infringing their IP.
Possibly.
For instance, match.com - can anyone use a similar domain like matching.com, match.net, perfectmatch.com, matchmaker.com, etc for dating sites without infringing on their IP?
The question is there is a likelihood of confusion. I would suspect match.net would certainly be considered so. Matchmaker.com, not so much.
2. If a generic foreign language word (translating to "marriage") is used for registering a trademark, can the same foreign language word be used by others for the same goods and services without infringing their IP. If they sue for IP Infringement, is it possible to have their trademark canceled because it is a foreign language word which means "marriage" in English as per their own filing?
There's no distinction on foreign words. If there's a likelihood of confusion it's infringing. The only thing a foreign word might be considered as fanciful rather than descriptive, a criteria for qualifying for trademark protection to begin with.
3. Is it possible to create a similar-looking website without infringing on their IP and use same generic foreign domain name but a different extension or starting with the same word or containing the same word?
Copying websites are fraught with copyright issues. I don't understand the rest of your quesiton.
4. If match.com is a valid registered mark, how come perfectmatch.com, matchmaker.com are registered without infringement or being sued?
What makes you think they are infringing?
6. Why do companies register generic terms (match.com) if they cannot be protected from others using it?
Because your fundamental premise is wrong. There's no prohibition on using generic words as trademarks. What you can't do is use DESCRIPTIVE words.

"SOFT MATTRESSES" would probably not qualify as a protected mark. "SOFT TRAVEL" most likely would.
 

quincy

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

Can generic words be registered as trademarks? If so, can others re-use the same words for offering the same goods and services without infringing their IP. For instance, match.com - can anyone use a similar domain like matching.com, match.net, perfectmatch.com, matchmaker.com, etc for dating sites without infringing on their IP?

2. If a generic foreign language word (translating to "marriage") is used for registering a trademark, can the same foreign language word be used by others for the same goods and services without infringing their IP. If they sue for IP Infringement, is it possible to have their trademark canceled because it is a foreign language word which means "marriage" in English as per their own filing?

3. Is it possible to create a similar-looking website without infringing on their IP and use same generic foreign domain name but a different extension or starting with the same word or containing the same word?

4. If match.com is a valid registered mark, how come perfectmatch.com, matchmaker.com are registered without infringement or being sued?

6. Why do companies register generic terms (match.com) if they cannot be protected from others using it?

TIA
Generic words cannot on their own be registered as trademarks. There is no protection offered generic words under trademark laws.

A generic word when used in combination with another word, on the other hand, could potentially create a trademark that is eligible for trademark registration and protection - although combining a generic word with a "dot com" or a "dot net" probably wouldn't create a protectable mark. The Ninth Circuit ruled in 2010 on "Advertise.com" and whether it was too generic to be a protected trademark (Advertising.com v. AOL Advertising, Inc, 166 F.3d 974, 9th Cir. 2010 - http://cdn.ca9.uscourts.gov/datastore/opinions/2010/08/03/10-55069.pdf). When registering a combination generic/word mark with the USPTO, the generic word would be disclaimed.

Generic words do not adequately distinguish one product or service from another, for one thing, and distinguishing one product or service from another is the sole purpose of a trademark. Anyone can use generic words.

Descriptive marks and geographic marks and surnames would all be considered "weak" marks to begin with and would not be eligible for placement on the Principal Register (although, if used in commerce, these marks could be placed on the Supplemental Register). These marks, or combination marks, might start off as weak marks and then gain protection over time. Once a trademark becomes connected in consumers' minds with the product or service being marketed, the trademark is said to have gained a "secondary meaning."

Once a trademark has developed a secondary meaning (like: McDonald's, Arizona Iced Tea, Kentucky Fried Chicken, Speedy Printing), the mark is eligible for placement on the Principal Register.

If a foreign word is used as a trademark in the US to identify goods or services, and the word is not being used by anyone else or not registered in the US by anyone in any other country on similar goods or services, then it could be possible to register the mark, even if the word is a generic word in another country (depending on all facts and particulars). The company using such a mark, though, should carefully consider the meaning of the foreign word, this especially so if the company has long-range plans to expand outside US borders.

You generally cannot copy another's website without infringing on the website owner's copyrights. You generally cannot use the same or similar trademark on the same or similar goods or services without infringing on a trademark holder's rights.

What is important to remember is the purpose of trademark law. It is to distinguish one product and service from another - not to confuse consumers into thinking one product or service is that of another.

The best way to ensure you are choosing a name to identify your product or services that will not infringe on anyone's rights is to have an IP attorney in your area review the facts and particulars. The attorney can advise you accordingly.
 
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FlyingRon

Senior Member
To be clear, there's a confusion on the original posters use of terminology. He says "generic" when he really means real English words I believe. "Generic" means respective of a class. As hence they are not (well) protected by trademark. The advertising.com decision specifically uses the term "descriptive."

So generic (representative of a class) or other descriptive words can be used as marks but won't get much protection.

However regular words can certainly be strong marks. Perhaps the most famous one is "Apple." While this is rather fanciful compared to computers, it probably wouldn't be a good mark for fruit companies or pies or such.

In fact, trademarks can be even more bizarre. A number of companies have trademarked colors, for example Owens-Corning has "pink" for insulation products. Dewalt has black and yellow for tool colorings, etc...
 

quincy

Senior Member
To be clear, there's a confusion on the original posters use of terminology. He says "generic" when he really means real English words I believe. "Generic" means respective of a class. As hence they are not (well) protected by trademark. The advertising.com decision specifically uses the term "descriptive."

So generic (representative of a class) or other descriptive words can be used as marks but won't get much protection.

However regular words can certainly be strong marks. Perhaps the most famous one is "Apple." While this is rather fanciful compared to computers, it probably wouldn't be a good mark for fruit companies or pies or such.

In fact, trademarks can be even more bizarre. A number of companies have trademarked colors, for example Owens-Corning has "pink" for insulation products. Dewalt has black and yellow for tool colorings, etc...
Yes, there appeared to be some confusion. :)

But it is important to clarify and emphasize that "generic" words never receive protection under trademark law whereas "descriptive" words can and have received protection under trademark law. These words have a specific meaning in trademark law.

It was whether the word "advertising" was a generic word covering an entire type of product or service or was, instead, a descriptive word which described the characteristics of a product or service, that was the subject of the debate in the AOL suit referenced earlier.

"Weak marks," or those words that are descriptive, are surnames or are geographic in nature, can all be registered, but these types of marks will only become strong marks eligible for placement on the Principal Register after time has allowed these marks to connect the marks with the products or services in a consumer's mind. The mark will then sufficiently identify the product and service and distinguish it from all other products and services. Marks like Speedy Printing and McDonald's started off as weak marks but gained the secondary meaning necessary for registration.

"Strong marks" are marks that distinguish the product or service without having to gain a secondary meaning. They start off strong.

A mark like "Apple" is an "arbitrary" mark and it is a strong mark because, although apple is a common or generic word in everyday use, the word Apple is not being used to identify the fruit but is used to identify something other than an apple (computers, music). Other similar arbitrary marks would be marks like Penguin for books, and Arrow for shirts.

Additional strong marks are "fanciful" marks which are often made-up words (like Kodak and N!KE) or portmanteau words, and "suggestive" marks that give only an idea of what the product or service is all about (like Roach Motel).

Color can potentially be an element or a feature of a mark that is registered but it is not registered as a mark itself.
 

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