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Word Trademark Question

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Gemcricket

Junior Member
A division is planning on launching a program. The program contains a word that is register and live with the USPTO. The program serves the exact same purpose as that specified in the patient office but also includes the company's name and a space. Is this a violation?

For example:
Facebook
Harvard Face Book

BranchOut
MSU College Branch Out

Windex
Philly Win Dex

I have a consultant telling me it's fine, but it doesn't sit well with me. Also I know putting in a space doesn't change anything.

Thank you!
 


quincy

Senior Member
A division is planning on launching a program. The program contains a word that is register and live with the USPTO. The program serves the exact same purpose as that specified in the patient office but also includes the company's name and a space. Is this a violation?

For example:
Facebook
Harvard Face Book

BranchOut
MSU College Branch Out

Windex
Philly Win Dex

I have a consultant telling me it's fine, but it doesn't sit well with me. Also I know putting in a space doesn't change anything.

Thank you!
Are you in the U.S.? If not, in what country do you reside?

Your examples on their own appear to infringe on the rights of the trademark owners.

I suggest you find a different consultant.
 

FlyingRon

Senior Member
I agree. Adding words to a mark, especially a famous mark, doesn't magically make the new mark not infringing.

Some things that may have confused you. First, a geographic name that's purely descriptive usually isn't protectable. For example, despite some litigation, "The Boston Beer Company" was not successful in stopping others from using the words "Boston" and "Beer" in their marks (they're at it again, having tried to register BREXIT as a brand as well).

Second, some countries (but not so much in the US), have protected Geographic Indications (the EU has developed this to a high level). You can't use certain terms unless you meet the requirements of that area (primarily the product has to be sourced there). The big ones on this are wine and spirits and cheese, though it's not limited to those goods. In the US, there are strict rules on what you can put on alcoholic beverage labels. In deference to the French, for example, you no longer can use "Champagne" by itself. US law allows you to preface that with a state name: "New York Champagne" or "California Champagne" but you can't sell that in the in the EU with that marking.
 

Taxing Matters

Overtaxed Member
I have a consultant telling me it's fine, but it doesn't sit well with me. Also I know putting in a space doesn't change anything.

Thank you!
As you describe it you have good reason to feel uncomfortable. I think rather than a “consultant” you need a to ask a trademark attorney. That consultant, if he or she is not a lawyer, may be treading on unauthorized practice of law and, significantly for your company, may not really know trademark law. If you follow that consultant’s advice and it blows up later, does that consultant have malpractice insurance to pay your company for the damages incurred? If the consultant isn't a lawyer I’m going to bet the answer to that is no. Find an attorney who practices primarily in the area of trademark law before your company decides to use this plan.

By the way, even if it somehow didn’t infringe on the trademark of the other company, using the kind of mark you describe is a poor business decision because your mark will not stand out as well against that other mark, and your firm may well lose business because of it. It is much better to come up with a unique name that is nothing like what is already being used out there. Those marks are the ones that will have real value if the business does well.
 

quincy

Senior Member
The Boston Beer Company is a protected trademark. No one else can call a beer company by the same name. This is true for trademarks like Arizona Iced Tea and Kentucky Fried Chicken, as well.

What cannot be protected are the generic words that make up the trademarks - Boston, beer, company, Arizona, iced tea, Kentucky, fried, and chicken. Anyone can use those words. A beer company in Boston can say their beer company is located in Boston. These generic words in the same combination (The Boston Beer Company) just cannot be used as an identifier for another business.

The consultant if not an attorney should not be advising Gemcricket and, IF an attorney, should not be advising Gemcricket on IP matters.
 
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FlyingRon

Senior Member
The Boston Beer Company is a protected trademark. No one else can call a beer company by the same name. This is true for trademarks like Arizona Iced Tea and Kentucky Fried Chicken, as well.

What cannot be protected are the generic words that make up the trademarks - Boston, beer, company, Arizona, iced tea, Kentucky, fried, and chicken. Anyone can use those words. A beer company in Boston can say their beer company is located in Boston. These generic words in the same combination (The Boston Beer Company) just cannot be used as an identifier for another business.
My strawman was not chosen arbitrarily. The Boston Beer Company attempted to enjoin others from using both "Boston Beer" (the allegedly infringing mark was Boston Beer Works) AND the use of Boston with regard to any beer. They pretty much got trounced in district court and on appeal.|

Arizona Iced Tea, by the way, is not a trademark. The trademark is simply "AriZona" as applied to that companies line of tea-based beverages. AriZona is fanciful here (and note the capital Z). Nothing with regard to the company has anything whatsoever to do with the state of Arizona. It's a NY based operation.
 
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quincy

Senior Member
My strawman was not chosen arbitrarily. The Boston Beer Company attempted to enjoin others from using both "Boston Beer" (the allegedly infringing mark was Boston Beer Works) AND the use of Boston with regard to any beer. They pretty much got trounced in district court and on appeal.
"Boston Beer" on its own was not found to have developed a secondary meaning. However, The Boston Beer Company is a registered and protected mark (with "Beer" and "Company" disclaimed). No other company can use that particular trademark.

https://law.justia.com/cases/federal/appellate-courts/F3/9/175/540362/

The Boston Beer Company also tried to register "The Best Beer in America" as a trademark. That mark was (no surprise) rejected.

http://caselaw.findlaw.com/us-federal-circuit/1081899.html

Arizona Iced Tea was a registered trademark but the registration was canceled (registered from 1994 to 2005 and from 2003 to 2010).
 
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