Implied Trademark?

[Suzy.Smith]

What is the name of your state (only U.S. law)? California

I have a retail store as well as a website where I sell various colors/styles/sizes/finishes of a product.
The manufacturers of these products do not designate names for them, only unique stock numbers.
Over the past 25 years I have given unique names to the various items to help my customers understand what they will be purchasing.

It is common knowledge within the industry that the manufacturers do not give descriptive names to the product and only a handful of importers do.

Is there any law that would protect these names, aside from filing a trademark on each individual name (there are literally thousands)?

Several years ago I had an attorney briefly state that there could be an "implied trademark" on the names as I have used them for years in both print as well as online publication. I also have label files and label each unique color with our made up name as well as the manufacturers stock number, and in some cases our made up stock numbers. However, I am unable to locate any documentation online regarding an implied trademark.

Thanks in advance for any information provided that can help me keep these names unique to my business,
Suzy

 

[single317dad]

Someone will be along who will be more helpful to you than I will, but in the interim I will ask a couple of questions, the answers to which may help them help you.

- Does the broad consumer base refer to your product using the manufacturer's name or part number (e.g. facial tissue) or your given name (e.g. Kleenex)?

- Is your given name for the part a generic description in and of itself (e.g. #6 x 1" zinc pan head sheet metal screw) or a creative name (e.g. Red Dragon Slayer #44)?

 

[FlyingRon]

There's nothing "implied" about it. If you use these names as marks in commerce, they ARE trademarks.

You can indicate in any printed materials that these brands are trademarks (such as with the ™ symbol) so people know these are intended to be marks.
You could apply for registration but that is not strictly required.

Of course, the trademark means little unless you are willing to take the effort to watch for and do something about any infringers.

 

[Suzy.Smith]

There's nothing "implied" about it. If you use these names as marks in commerce, they ARE trademarks.

You can indicate in any printed materials that these brands are trademarks (such as with the ™ symbol) so people know these are intended to be marks.
You could apply for registration but that is not strictly required.

Of course, the trademark means little unless you are willing to take the effort to watch for and do something about any infringers.

Thanks, FlyingRon.

Is it required to put a mark next to each name to then go back and tell someone they don't have my permission to use them?

Or is the fact that it is common knowledge in my industry that the product did not come with the name the person is using? They had to go to my website to take it.

I would like to draft a cease and desist letter to several other companies, but one in particular who is using over 1000 of the names I gave to the products. And they are not common names like blue or green, but very descriptive within our industry to really help the customer understand what the color may actually look like. Such as Steel Green/Gold Iris Matte.

Suzy

 

[Suzy.Smith]

Someone will be along who will be more helpful to you than I will, but in the interim I will ask a couple of questions, the answers to which may help them help you.

- Does the broad consumer base refer to your product using the manufacturer's name or part number (e.g. facial tissue) or your given name (e.g. Kleenex)?

- Is your given name for the part a generic description in and of itself (e.g. #6 x 1" zinc pan head sheet metal screw) or a creative name (e.g. Red Dragon Slayer #44)?

To your first question, it depends. My customers will many times refer to the name I gave the product when calling to ask a specific question, but we encourage them to supply the stock number for accuracy. Within the industry a stock number is more standard for reordering or inquiries. Items are categorized in order by size then stock number. The name is used only to help the consumer visualize in their mind what the color may actually look like. There is a little gray area there as well - as some of the product has been given unique stock numbers that are not manufacturer specific.
So, for instance, my number 123 may be for a totally different color than another companies 123 while the product itself is the same widget.

I estimate that 75-85% of my given names are unique and creative. There are some that are generic, (such as Transparent Aqua) and others that are very descriptive within the industry to really help the consumer understand. The name may include a very helpful term to describe the shade of Aqua and then additional names added to that to describe any treatments given to the finish. (such as Transparent Seafoam Green Matte AB).

Suzy

 

[quincy]

To your first question, it depends. My customers will many times refer to the name I gave the product when calling to ask a specific question, but we encourage them to supply the stock number for accuracy. Within the industry a stock number is more standard for reordering or inquiries. Items are categorized in order by size then stock number. The name is used only to help the consumer visualize in their mind what the color may actually look like. There is a little gray area there as well - as some of the product has been given unique stock numbers that are not manufacturer specific.
So, for instance, my number 123 may be for a totally different color than another companies 123 while the product itself is the same widget.

I estimate that 75-85% of my given names are unique and creative. There are some that are generic, (such as Transparent Aqua) and others that are very descriptive within the industry to really help the consumer understand. The name may include a very helpful term to describe the shade of Aqua and then additional names added to that to describe any treatments given to the finish. (such as Transparent Seafoam Green Matte AB).

Suzy

The names you are giving your products do not appear to sufficiently distinguish your products from those being marketed by others. I do not see, from what you have posted, that you can gain trademark rights in these names.

"Transparent Aqua" describes the color but is not an indicator of origin unless or until consumers identity this particular color-label with the specific item you sell under that name. This apparently is not the case if your customers must also provide a stock number for accuracy. Your descriptive terms have not gained a secondary meaning in the marketplace.

You, in other words, are merely describing the color of your items.

I see you having a difficult time pursuing for infringement any others who sell the same item using color descriptors like yours - but you should have an attorney in your area personally review all facts to determine this better.

From the Trademark Examiner's Manual, 1209.03(c): The fact that an applicant may be the first and only user of a merely descriptive or generic designation does not justify registration if the only significance conveyed by the term is merely descriptive.

 

[Suzy.Smith]

I see you having a difficult time pursuing for infringement any others who sell the same item using color descriptors like yours - but you should have an attorney in your area personally review all facts to determine this better.

From the Trademark Examiner's Manual, 1209.03(c): The fact that an applicant may be the first and only user of a merely descriptive or generic designation does not justify registration if the only significance conveyed by the term is merely descriptive.

Thanks for the reply, Quincy. I'm confused now as there are two totally opposing views on this within the thread.

I saw the comment from the trademark manual previously, but I interpreted it to mean generic, such as Transparent Aqua...in my industry that would most certainly be a generic name. But some of the more complex names I've given to the procucts are not generic. They are, however, very descriptive.

So, I remain confused.

Suzy

 

[quincy]

Thanks for the reply, Quincy. I'm confused now as there are two totally opposing views on this within the thread.

I saw the comment from the trademark manual previously, but I interpreted it to mean generic, such as Transparent Aqua...in my industry that would most certainly be a generic name. But some of the more complex names I've given to the procucts are not generic. They are, however, very descriptive.

So, I remain confused.

Suzy

You did receive two opposing views. That is bound to be confusing, huh?

The function of a trademark is to distinguish one company's products and services from those of others. I see problems with you trying to assert trademark rights on names that merely describe the colors of your items, especially when these items are the same items as those being marketed by others.

You did not mention how you are marketing your items or how you are connecting the color-described items with your particular retail store/website. This could make a difference. However, the fact that you say you "encourage" your customers to supply the stock number when ordering works against your descriptors being used as trademarks that warrant protection. What it indicates instead is that the color-descriptors you are using do not work with the consuming public to adequately identify your items.

Under trademark law, marks that describe items would be considered "weak marks" at best - although weak marks can potentially become strong marks over time, if the consuming public starts to identify a product or service by the descriptive name. This is what happened with Kentucky Fried Chicken and Speedy Printing and Arizona Iced Tea.

I suggest, if you want to protect the names you are using, or to determine better if you have established protectable rights in the names, that you sit down with an IP attorney in your area to review the items you sell and to review the actual names you have chosen as identifiers for these items, and to review how you are marketing these items to the consuming public.

Good luck, Suzy.Smith.