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Trademark Statement of Use

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hermbagger

Junior Member
What is the name of your state (only U.S. law)? California
Hi, registered a made up word for trademark. As an example the word "Galax-y". In the statement of use, is it a problem if the trademarked word shows up with other words around it, for example "The Galax-y System" ?
 


FlyingRon

Senior Member
What is the name of your state (only U.S. law)? California
Hi, registered a made up word for trademark. As an example the word "Galax-y". In the statement of use, is it a problem if the trademarked word shows up with other words around it, for example "The Galax-y System" ?
You're going have to explain just what you're talking about. But no, it's typically not a problem. Trademarks are rightfully adjectives anyhow.

The Ford car.
The Coke drink.
The McDonald's restaurant.
 

Zigner

Senior Member, Non-Attorney
What is the name of your state (only U.S. law)? California
Hi, registered a made up word for trademark. As an example the word "Galax-y". In the statement of use, is it a problem if the trademarked word shows up with other words around it, for example "The Galax-y System" ?
I know you're just using "Galax-y" as an example...but such an example is a poor one, as Samsung would frown upon it.
 

hermbagger

Junior Member
You're going have to explain just what you're talking about. But no, it's typically not a problem. Trademarks are rightfully adjectives anyhow.

The Ford car.
The Coke drink.
The McDonald's restaurant.

The product is a vitamin supplement system which includes several different supplements, but didn't want to TM "Galax-y System" as we will want to use "Galax-y" as well on it's own and with other quanitfiers such as "Galax-y Method" or "Galax-y solution", etc************** But our first product says "The Galax-y System" on it, rather than just "Galax-y" which was what we Trademarked.
 

quincy

Senior Member
The product is a vitamin supplement system which includes several different supplements, but didn't want to TM "Galax-y System" as we will want to use "Galax-y" as well on it's own and with other quanitfiers such as "Galax-y Method" or "Galax-y solution", etc************** But our first product says "The Galax-y System" on it, rather than just "Galax-y" which was what we Trademarked.
If your trademark is, in fact, a made up word unique to you alone, adding other words before or after your trademark should not affect its strength.

Strong marks are provided the most protection under trademark laws. These strong marks include words that are used in unexpected ways (e.g., arbitrary uses like Arrow for shirts, Penguin for books) and made up words (e.g., Google, Kodak).

Words like "system" and "method" are generic words that on their own or with other trademarks can be used by anyone. Unless used in an arbitrary way (e.g., "Method" used as a clothing brand), the words must be disclaimed.

A personal review by an IP professional in your area is always a good idea.
 
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