Can common words be trademarked?

[ClaireB]

Happy to discover this corner. I understand that there is a Trademark Lawyer here.

Can one trademark common words used by everyone when speaking and writing without necessarily having a specific company identifying element?

For e.g. would any western trademark office agree to trademark "Training Consultants"? I understand that the courts have rules otherwise saying that these are common words used in the English language and that everyone has the right to use them.

I recently raised the question of Ripley's Believe It Or Not. Would any court back up their claim that the words "believe it or not" without the "Ripley's" is their trademark? Can they bar others from using this expression, which is one we regularly use when speaking or writing?

I would appreciate your opinion. I wrote to them yesterday but they did not yet respond.

Claire

 

[jberryhill]

Can common words be trademarked?

Have you ever used TIDE or CHEER detergent?

Wash your dishes with JOY or DAWN?

Shine your furniture with PLEDGE or PRIDE?

Brush your teeth with CREST?

Have you ever flown on DELTA, VIRGIN, or UNITED?

Filled up at a SHELL gas station?

Used CHAMPION spark plugs?

Worn a CHAMPION t-shirt?

Qualified for a CHAMPION mortgage?

Drink SPRITE?

They are all everyday words when applied to things OTHER than the goods or services for which they have acquired secondary meaning in the minds of consumers when used on or in conjunction with those goods or services as an indicator of the source, origin, or consistent quality of those goods or services sufficent to distinguish them from other such goods or services in the marketplace.

Believe it or not, you can use a phrase like "believe it or not" in ordinary conversation, or even as the lyrics to the theme of Greatest American Hero, but if you are using those words as an identifier of, say, entertainment services, then you are probably infringing a trademark, since the phrase "Believe it or Not!" is probably immediately recognizable to a large portion of the public as being associated with particular entertainment services originating with a company in Florida which has used that phrase to distinguish their entertainment products for several decades.

Not only would a court believe it, but a court would be required to afford Ripley Entertainment a PRESUMPTION of validity and ownership of the mark "BELIEVE IT OR NOT" in connection with "a series of cartoons" as that is the subject of United States Trademark Registration No. 198531 issued May 19, 1925 to Robert Ripley, and since assigned to the company by that name. It is also extremely likely, given that this trademark registration, among others, is 80 years old and still in use, that it is a FAMOUS mark and thus entitled to protection under the federal anti-dilution act such that, even if it were being used on goods other than "a series of cartoons" that such use would be detrimental to the distinctive value of the mark.

And of course, neither Ripley Entertainment nor anyone else is obligated to provide you with answers to trademark questions within 24 hours or any other period of time.

 

[ClaireB]

Can common words be trademarked?

Have you ever used TIDE or CHEER detergent?

Wash your dishes with JOY or DAWN?

Shine your furniture with PLEDGE or PRIDE?

Brush your teeth with CREST?

Have you ever flown on DELTA, VIRGIN, or UNITED?

Filled up at a SHELL gas station?

Used CHAMPION spark plugs?

Worn a CHAMPION t-shirt?

Qualified for a CHAMPION mortgage?

Drink SPRITE?

They are all everyday words when applied to things OTHER than the goods or services for which they have acquired secondary meaning in the minds of consumers when used on or in conjunction with those goods or services as an indicator of the source, origin, or consistent quality of those goods or services sufficent to distinguish them from other such goods or services in the marketplace.

Believe it or not, you can use a phrase like "believe it or not" in ordinary conversation, or even as the lyrics to the theme of Greatest American Hero, but if you are using those words as an identifier of, say, entertainment services, then you are probably infringing a trademark, since the phrase "Believe it or Not!" is probably immediately recognizable to a large portion of the public as being associated with particular entertainment services originating with a company in Florida which has used that phrase to distinguish their entertainment products for several decades.

Not only would a court believe it, but a court would be required to afford Ripley Entertainment a PRESUMPTION of validity and ownership of the mark "BELIEVE IT OR NOT" in connection with "a series of cartoons" as that is the subject of United States Trademark Registration No. 198531 issued May 19, 1925 to Robert Ripley, and since assigned to the company by that name. It is also extremely likely, given that this trademark registration, among others, is 80 years old and still in use, that it is a FAMOUS mark and thus entitled to protection under the federal anti-dilution act such that, even if it were being used on goods other than "a series of cartoons" that such use would be detrimental to the distinctive value of the mark.

Thank you for your response. But from the examples you give above I can argue that United identifies itself as United Airlines, Cheers as Cheers Detergent, and so forth, meaning one cannot name another airline United (although this too can be argued, e.g. if they call an airline United Air Fleet, I really do not know what the courts would rule).

I know that the family of Martin Luther King have "copyrighted" (probably not trademarked) the expression "I have a dream" and I do not think this would hold up in court unless one writes an article or speech is a sort of copycat, misleading the public.

But if I have a believe it or not web site where I put funny happenings, can Ripley's claim that this is their trademark?

And, regarding trademarks, don't they apply to the country where they were trademarked? One has to trademark in different States and Countries in order to have an international trademark. Is this correct?

Claire

This point makes me so curious, I will write to the Canadian copyright office to also ask them about this exact case (the believe it or not one).

 

[labrocca]

I think you are infringing and can have some trouble if Ripleys notices you. You are using the phrase nearly identical to them. Why not use "the unbelievable may be true"? Most likely because you think "believe it or not" is catchier but that's only because it's a popular phrase and known as the Ripleys trademark phrase.

Recognize the law and don't try to intepret it for your own twisted logic.

 

[ClaireB]

I think you are infringing and can have some trouble if Ripleys notices you. You are using the phrase nearly identical to them. Why not use "the unbelievable may be true"? Most likely because you think "believe it or not" is catchier but that's only because it's a popular phrase and known as the Ripleys trademark phrase.

Recognize the law and don't try to intepret it for your own twisted logic.

I registered the domain name (more than 3 weeks ago) and absolutely did not have Ripley's in mind and did not intend to copycat them. I didn't even go to the whois to see who owns believeitornot.com (which shows you I totally did not have the famous TV program in mind at all).

Anyhow, I wrote to Ripleys yesterday (their legal top boss) telling them what happened, saying how I was surprised to see them claim trademark for those words (without the Ripley's) according to an email they sent to an educational site which was posted there, gave them my own viewpoints, and told them I look forward to hearing from them.

I never look for trouble, nor do I cause trouble. I was genuinely surprised when I read their email to that Professor. I hope they will respond.

By the way, I became known as easytraining (will not put the extension) on the web. Immediately after my site became popular and gained status, others registered the same name with different country extensions all over the world. I never thought to approach them and say that they are infringing on me although they do give, like I do, management and training consulting services, meaning, if people do not pay attention to the extension, they will think they reached me when they reached the other sites (.e.g. with co.uk, .de etc.).

Claire

 

[jberryhill]

But from the examples you give above I can argue that United identifies itself as United Airlines, Cheers as Cheers Detergent, and so forth

No. The box says "CHEER" on it, and their trademark registration is for "CHEER". Ditto all of the other registered marks I noted in the post.

One of the reasons you will hear things like "Band-Aid brand bandages" is that trademarks, when most properly used in connection with the goods, are used as ADJECTIVES, not nouns. Band-Aid even changed the words to their song a while back from "I am stuck on Band-Aid..." to "I am stuck on Band-Aid brand..." to avoid genericide, which can arise from the public perception shifting to a primary impression as a noun for that type of product.

So, while the box says "CHEER" on it, I would properly advertise by inducing you to purchase "CHEER brand detergent" etc.

UNITED is, of course, also a moving van company, among other things. Ponder the use of "UNITED STATES AIR FORCE" for air transport services...

But if I have a believe it or not web site where I put funny happenings, can Ripley's claim that this is their trademark?

Publishing "weird stuff" seems to be what they are famous for, doncha thinK?

http://www.johnberryhill.com/Benelux2005/photos/photo14.html

 

[DNQuest.com]

I registered the domain name (more than 3 weeks ago) and absolutely did not have Ripley's in mind and did not intend to copycat them. I didn't even go to the whois to see who owns believeitornot.com (which shows you I totally did not have the famous TV program in mind at all).

Claire

So you honestly think the court will care if you gave them this explaination? Ignorance has almost never successfully been used as a defense.

 

[carlton]

John's examples attained national recognition through many years of widespread use. The same level of protection is not afforded to all trademarked generics. Protection is limited to specific product/service classifications, i.e. Champion Windows, Champion Spark Plugs, Champion Mortgage.

While none of these companies can prohibit the use of "champion" in dissimilar product areas, their trademark does prohibit someone from using ''champion" in a similar product category. Ex. there may be only one 'Champion Spark Plugs'.

Also to ponder are geographical restrictions. There could be dozens of unrelated "Johnson's Auto Repair" shops across the country, but protection is likely limited to the geographical area in which each operates.

 

[jberryhill]

Thank you Carlton. That is indeed why I included Champion, which was in fact the subject of a nine-way shooting match over champion.com.

Ponder going to the lavatory on a DELTA airplane and finding a DELTA faucet....

But rather than to say "trademarked generics", you might call them "arbitrary marks" which is the normal term for "ordinary words used in an arbitrary manner as a mark". A word is not "generic" in the trademark sense outside of context - e.g. "APPLE" is generic for a fruit, but not generic for a computer company or a British music publisher.

Even registered marks can be geographically limited within a single country. For example, the University of Southern California has a US registered trademark for USC restricted to the west of the Mississippi, while the same US registered mark is restricted to the east for the University of South Carolina.

Believe it... or not!

 

[Dave Zan]

Anyhow, I wrote to Ripleys yesterday (their legal top boss) telling them what happened, saying how I was surprised to see them claim trademark for those words (without the Ripley's) according to an email they sent to an educational site which was posted there, gave them my own viewpoints, and told them I look forward to hearing from them.

I never look for trouble, nor do I cause trouble. I was genuinely surprised when I read their email to that Professor. I hope they will respond.

While at it, "look forward" to getting a response saying your domain infringes
on their mark and transfer the domain to them right away or face penalties.
Sure you're not looking for trouble, but that doesn't mean they won't.

Just some other things to consider and maybe expect.

Unbelievable? Believe it...

(Off-topic, I prefer Jack Palance's over Dean Cain's...)

 

[ClaireB]

While at it, "look forward" to getting a response saying your domain infringes
on their mark and transfer the domain to them right away or face penalties.
Sure you're not looking for trouble, but that doesn't mean they won't.

Just some other things to consider and maybe expect.

Unbelievable? Believe it...

(Off-topic, I prefer Jack Palance's over Dean Cain's...)

Thank you all. Carlton and some of you described my own thoughts and position on this.

I just exchanged correspondence with the Professor who had a web page for his students called Believe it or not who received the stern warning (I would say threat) by Ripley's legal department and he says that when he got their email he immediately passed it on to his university's legal department.

They said the same as I said: that since he did not call it Ripley's Believe It Or Not he had not infringed on anyone's rights and had not broken trademark rules. However, since Ripley's came across as wanting to exercise "muscle" they recommended that he rename his page to avoid trouble though he had done nothing wrong.

Maybe this is why the legal department of Ripley's did not yet acknowledge my email to them and did not answer.

I think that the trademark office would probably refuse to trademark the words "believe it or not" per se.

When I began on the web, I wanted to book www.hospitality.com and the registration authority here refused to do so - they said it would not be fair to all the hospitality programs and concerns in Canada, that a regular individual could not book "hospitality". I think I had a similar response from the trademark office when I wanted to trademark another word or "easy training", separated and not stuck together. They said they are generic words and could not be trademarked per se and then informed me that trademarks are per geographic area and that there was no international trademark but one had to do it region by region all over the world. Same with copyright. This is why many countries signed agreements to respect each other's copyright laws and (I believe) copyrighted works.

Claire

There is an additional legal issue here:

When wanting to trademark something the person wishing to trademark it must trademark also the exact combination of words stuck together since URLS require this (you cannot have words with spaces in an URL).

 

[Anthony Ng]

When I began on the web, I wanted to book www.hospitality.com and the registration authority here refused to do so - they said it would not be fair to all the hospitality programs and concerns in Canada, that a regular individual could not book "hospitality".

Interesting. But can you clarify a bit? WHO exactly is that "registration authority here ... in Canada" that refused to do so?? Thanks.

 

[ClaireB]

Interesting. But can you clarify a bit? WHO exactly is that "registration authority here ... in Canada" that refused to do so?? Thanks.

That was CIRA when it began - I do not remember if they were called that at the time. It was over the phone. They were calling me to convince me to register a Canadian extension. I also remember that at the time, they were refusing that I register .ca extensions saying unless I am incorporated for Canada, I can only register .bc.ca

All Canadian registrations were very complicated and expensive at the time - many of us just did not see any value in going through that trouble and expense and considered .com much easier and more useful.

It is only recenently that I checked, saw it became easier and cheaper, and registered my personal name, my home page name etc. with .ca extensions and even encouraged others to do so. When I saw it became easier, I registered many other names.

 

[jberryhill]

Do I understand correctly that you have insinuated yourself in correspondence between Ripley's counsel and a third party, and that you are not a legal representative of that third party?

I think that the trademark office would probably refuse to trademark the words "believe it or not" per se.

Well, you are dead wrong. I gave you the registration number of the mark issued in 1925 by the USPTO for "BELIEVE IT OR NOT" - those words, per se.

When wanting to trademark something the person wishing to trademark it must trademark also the exact combination of words stuck together since URLS require this (you cannot have words with spaces in an URL).

If you believe that, then you would do well to stay away from domain names.

Here is a court awarding $35,000 in damages to the holder of the "ELECTRONICS BOUTIQUE" trademark, against a person who registered electronicboutique.com and eletronicsboutique.com.

http://www.gigalaw.com/library/electronicsboutique-zuccarini-2000-10-30-p1.html

 

[Anthony Ng]

That was CIRA when it began ...

Yes, second level .ca were only reserved for the federally incorporated back then; HOWEVER, it was *free* if memory still serves me correct. Moreover, how did they forbid your registering hospitality.COM??

 

[namedropper]

They said the same as I said: that since he did not call it Ripley's Believe It Or Not he had not infringed on anyone's rights and had not broken trademark rules.

Someone here is seriously confused. I doubt it was the professor's lawyers. Either he misunderstood what they said or you misunderstood what he said... or both, I suppose.

 

[Dave Zan]

When I began on the web, I wanted to book www.hospitality.com and the registration authority here refused to do so - they said it would not be fair to all the hospitality programs and concerns in Canada, that a regular individual could not book "hospitality".

I wonder if your next post is the reason why they told you that.

They were calling me to convince me to register a Canadian extension.

 

[jberryhill]

Someone here is seriously confused. I doubt it was the professor's lawyers. Either he misunderstood what they said or you misunderstood what he said... or both, I suppose.

Ah... I see the switcheroo here:

I just exchanged correspondence with the Professor who had a web page for his students called Believe it or not

and..

I registered the domain name (more than 3 weeks ago) and absolutely did not have Ripley's in mind and did not intend to copycat them. I didn't even go to the whois to see who owns believeitornot.com (which shows you I totally did not have the famous TV program in mind at all).

The confusion apparently arises from an apples and oranges comparison of the title used on what was probably some academic web page, and the domain name which she registered for purposes which remain unclear.

Of course, I don't know what checking the whois on believeitornot.com would have suggested. After all, if anyone had checked it a few years ago, they would only have noticed that it was registered to someone else entirely than it is now... and neither of those folks is Ripley.

Whereupon Dan Norder checks archive.org, looks at the earliest entry, and chuckles...

I will say this, though... the cool thing about letters from inside counsel at Ripley is that they have great stationery.

 

[DNQuest.com]

"I just exchanged correspondence with the Professor who had a web page for his students called Believe it or not who received the stern warning (I would say threat) by Ripley's legal department and he says that when he got their email he immediately passed it on to his university's legal department.

They said the same as I said: that since he did not call it Ripley's Believe It Or Not he had not infringed on anyone's rights and had not broken trademark rules. However, since Ripley's came across as wanting to exercise "muscle" they recommended that he rename his page to avoid trouble though he had done nothing wrong."

In reading the above statement, Just because a lawyer of the offending party says so, doesn't mean they are right. Then again, the offending party's lawyer may not be a expert in the domain field.

 

[jberryhill]

Then again, the offending party's lawyer may not be a expert in the domain field.

Or it might not have been a domain issue at all.