Can common words be trademarked?

[Gray]

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

So why did they allow "believe it or not" in 1925, and not "easy training"?
Because Ripley was long established, or is training a noun?

 

[ClaireB]

JBerryHill

Are you with Giga?

Claire

Ah... I see the switcheroo here:



and..



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.

Had I gone to check the whois and seen ripley's then I would have remembered their TV program and probably would have stayed away from the name because I have many things on my plate and never intentionally look for problematic situations.

Claire

 

[jberryhill]

Are you with Giga?

Uh, my wife's name is Mari Jo. If I were with Giga, whomever she might be, then I am sure MJ would not be happy.

So why did they allow "believe it or not" in 1925, and not "easy training"?

I see nothing in the USPTO database that indicates either the filing or refusal of any application for "easy training".

"Easy training" would be a fine and registrable mark for a brand of dishwasher detergent. If registration were sought in connection with some sort of training or educational services, then the application would likely be refused on grounds of both descriptiveness and laudatory subject matter - i.e. "easy training" is descriptive of training services, and the assertion that the training is "easy" suggests some quality of the services that the Office is in no position to judge.

"Believe it or not" is not descriptive of a comic book, a television program, or any of the other goods and services for which Ripley's has sought, and obtained, federal registration and the presumptive validity thereof.

 

[ClaireB]

Well, I would appreciate your responses and opinions here:

I found the page with the trademarked Believe It Or Not, which raises a few questions and points, applicable to all other such cases:

http://tess2.uspto.gov/bin/gate.exe?f=doc&state=o3lgp7.4.13

1) I remembered that recently I had read that the trademark for Fosamax (anti-acid) was expiring, meaning that trademarks are time-limited and have to be renewed. I see that Ripley's have renewed their trademark regularly, the last renewal being 2004, as can be seen at the above URL

2) In the description of the Services for this trademark they speak about tv production and "entertainment exhibitions in the nature of unusual objects, events and facts, human achievements and human characteristics; museum services; operating displays used in connection with the exhibitions and the museum." (At first, it applied to clothing and T-shirts). So, does the trademark apply only to the sort of business they describe? And how can one find out if the expression is trademarked nationally and internationally? Another question: If someone calls his company with a different type of service "You Better Believe It Or Not" would he be infringing on their trademark? Another question: If they trademarked "Believe It Or Not" does this mean that believeitornot.com is also trademarked? Can they go ahead and trademark for e.g. believeitornot.co.in and all the different countries' extensions? (I do not mean actually buy the names but trademark each of the different country extensions - the exact URL).

3) Yesterday, on TV, there was an ad for a Canadian company called HARVEY'S FURNITURE AND EQUIPMENT. The obvious outstanding name was HARVEY'S, furniture and equipment appearing in smaller non-bold letters. I was surprised because here, in Canada, HARVEY's is very well known as a special fast-food chain. I couldn't see "furniture and equipment" at first, so I made sure to pay attention the next time the ad came. I believe that Harvey's trademarked their name just as Harvey's, but have to find the time to check it. The question is: If this is the case, if Harvey's (the famous fast food chain) registered the trademark Harvey's nationally, then can a Harvey's Furniture be also trademarked with no problem to the owner of this furniture business?

I am curious from a legal point of view. Thank you.

Uh, my wife's name is Mari Jo. If I were with Giga, whomever she might be, then I am sure MJ would not be happy.

I meant the company GIGA whose URL you gave
http://www.gigalaw.com/library/electronicsboutique-zuccarini-2000-10-30-p1.html


At this URL we read this:

" c. Bad-faith intent to profit

" Finally, I must consider whether Mr. Zuccarini acted with a bad-faith intent to profit from EB's marks, and if so, whether he is entitled to the protection of the safe harbor of § 1125(d)(1)(B)(2). In making that determination, I am guided by the following nine factors provided by § 1125(d)(1)(B):"

What is this "safe harbor"?

In the postings above, I said Ripley's and their program were not on my mind at all when I registered this domain. Someone seemed to twist my words (probably unintentionally) as if I was ignorant of the fact that Ripley's Believe It Or Not was theirs. I know the program but never even thought of them because for me "believe it or not", same as the other names I have brainyguys.com and Canadian versions of brainypeople.ca etc. (by the way all the "brainy" urls you find now on the web were registered only after I myself thought of brainyguys.com and registered it, is just an expression of the english language.

Claire

As long as you specialize in trademarks, can you explain this? Is this logical? It happened years ago:

We opened Tel Aviv Hilton (in Tel Aviv of course). Soon after this, someone began producing and packaging cigarettes under the name of Gilton cigarettes to attract people who would think it is Hilton. Hilton sued that manufacturer and, as far as I remember, won.

Would they have won in the U.S.? If Hilton is the hotel chain, can they bar someone from selling Gilton cigarettes? (different spelling!)

 

[Dave Zan]

Had I gone to check the whois and seen ripley's then I would have remembered their TV program and probably would have stayed away from the name because I have many things on my plate and never intentionally look for problematic situations.

Not too many domain owners, especially newbies, know that as well. But then,
ignorance of the law has never been really known to excuse anyone, either.

1) I remembered that recently I had read that the trademark for Fosamax (anti-acid) was expiring, meaning that trademarks are time-limited and have to be renewed. I see that Ripley's have renewed their trademark regularly, the last renewal being 2004, as can be seen at the above URL

http://gigalaw.com/articles/2000-all/pto-2000-04-all.html

Trademark rights arise from either (1) actual use of the mark, or (2) the filing of a proper application to register a mark in the Patent and Trademark Office (PTO) stating that the applicant has a bona fide intention to use the mark in commerce regulated by the U.S. Congress. Federal registration is not required to establish rights in a mark, nor is it required to begin use of a mark. However, federal registration can secure benefits beyond the rights acquired by merely using a mark. For example, the owner of a federal registration is presumed to be the owner of the mark for the goods and services specified in the registration, and to be entitled to use the mark nationwide.

2) In the description of the Services for this trademark they speak about tv production and "entertainment exhibitions in the nature of unusual objects, events and facts, human achievements and human characteristics; museum services; operating displays used in connection with the exhibitions and the museum." (At first, it applied to clothing and T-shirts). So, does the trademark apply only to the sort of business they describe? And how can one find out if the expression is trademarked nationally and internationally?

Either retain an attorney to do that or be a resourceful as resourceful can be.
It’s tedious, but sometimes you gotta go the extra mile in exchange for peace
of mind.

Another question: If someone calls his company with a different type of service "You Better Believe It Or Not" would he be infringing on their trademark?

Let’s put it this way: if ever it reaches dispute, it’ll depend on how much data
was submitted by all parties concerned, especially if the domain registrant will
respond at all.

Another question: If they trademarked "Believe It Or Not" does this mean that believeitornot.com is also trademarked?

I just checked the USPTO and I don’t see any registration filed for that name.
Beats me if it’s registered in other offices in other places, though.

Can they go ahead and trademark for e.g. believeitornot.co.in and all the different countries' extensions? (I do not mean actually buy the names but trademark each of the different country extensions - the exact URL).

Sure. But whether their applications will be accepted or not ultimately depends
on who’s examining them at their respective offices.

Unless the applying party has the time, money, and effort to burn, it doesn’t
seem practical…or even necessary.

3) Yesterday, on TV, there was an ad for a Canadian company called HARVEY'S FURNITURE AND EQUIPMENT. The obvious outstanding name was HARVEY'S, furniture and equipment appearing in smaller non-bold letters. I was surprised because here, in Canada, HARVEY's is very well known as a special fast-food chain. I couldn't see "furniture and equipment" at first, so I made sure to pay attention the next time the ad came. I believe that Harvey's trademarked their name just as Harvey's, but have to find the time to check it. The question is: If this is the case, if Harvey's (the famous fast food chain) registered the trademark Harvey's nationally, then can a Harvey's Furniture be also trademarked with no problem to the owner of this furniture business?

You’d best check the relevant trademark office for that query to be sure.

I meant the company GIGA whose URL you gave
http://www.gigalaw.com/library/elec...0-10-30-p1.html

Gigalaw is run by Doug Isenberg, another valuable “legal resource” on domain
name disputes. His articles on domain names and trademarks are still as darn
relevant today as when they were first written. (until something changes,
that is…)

At the rate you’re asking questions, you'd have to retain jberryhill or someone
else to help you on this subject. :-D

 

[ClaireB]

Apparently, several media, reporters, Churches, music practitioners, etc., feel free to use Believe It Or Not as a title for their articles and web pages. I just conducted a search on google on "believe it or not" and got many results. Here are some not related to Ripley's:

Another page, Believe It, or Not
http://www.cnn.com/2003/US/08/15/nyt.kristof/

By Nicholas D. Kristof
Op-Ed Columnist, New York Times
Friday, August 15, 2003 Posted: 9:49 AM EDT (1349 GMT)

A Catholic article

Cheney's Believe It or Not! - A BuzzFlash Reader Commentary
Cheney's Believe It or Not! A BUZZFLASH READER COMMENTARY. BACK TO TOP. Articles in the BuzzFlash Contributor section are posted as-is. ...
www.buzzflash.com/contributors/03/07/30_cheney.html

Walter E. Williams: Believe it or not
Believe it or not Walter E. Williams (archive). October 6, 2004 | printer friendly version Print | email to a friend Send. Benedict College in Columbia, SC, ...
www.townhall.com/columnists/walterwilliams/ww20041006.shtml

Telegraph | Opinion | Believe it or not, it wasn't just rednecks ...
Believe it or not, it wasn't just rednecks who voted for Bush By Mark Steyn (Filed: 07/11/2004). The big question after Tuesday was: will it just be more of ...
www.telegraph.co.uk/opinion/main.jhtml?xml=/opinion/2004/11/07/do0704.xml

Creation: Believe it or Not--Part 1
"Creation: Believe it or Not--Part 1". Selected Scriptures by John MacArthur All Rights Reserved (A copy of this message on cassette tape may be obtained by ...
www.biblebb.com/files/MAC/90-208.htm

BELIEVE IT OR NOT!
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www.bugsurvey.nsw.gov.au/html/believornot.html - 26k - Cached - Similar pages

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www.nytimes.com/books/00/01/23/reviews/000123.23lefkowt.html - 19k -

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believe it or not, this is what 'they' are doing to us.
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www.atimes.com/atimes/Front_Page/FD24Aa01.html - 33k

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www.canoe.ca/NewsStand/Columnists/Calgary/Ezra_Levant/2005/04/25/1011573.html -

Happiness is Christianity, believe it or not - National - www ...
Christians are happier than atheists and more generous, a new survey suggests. - The Age Online.
www.theage.com.au/news/National/Hap...lieve-it-or-not/2004/12/10/1102625532543.html -

Clarke"s Believe It or Not
Arthur Clarke is known for spinning elaborate, visionary tales of futures that might be, none more famous than <i>2001: A Space Odyssey</i> .
www.space.com/peopleinterviews/clarke_believe_010227.html - 30k

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The “e” of eLearning is not the important thing. Neither is the “learning.” What’s important is doing. It’s like the tree that falls in the forest not ...
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BELIEVE IT OR NOT. True life incidents. posts - 3, comments - 47. My Links. Home &#63568; Contact &#63568; Login &#63568; RSS 2.0 Feed. My Profile ...
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stopped in the middle of page 7 of google results

 

[Dale Hubbard]

My personal opinion: It seems that the preponderance of informed and professional advice has your bases covered Claire. Isn't this flogging a dead horse now?

 

[GT Web]

after slaughtering...flogging is my second favorite activity involving horses

 

[jberryhill]

Claire,

Having taken and passed my final exam in trademark law quite some time ago, I am not really interested in taking another one at this point in time. If you are interested in the topic, I'm sure you can find a book that discusses all sorts of issues.

I participate in online forums to unwind. As most longtime folks here know, I reserve the right to pick and choose what kinds of questions I answer, and I reserve the right to be sarcastic. This is what I do for recreation.

I'm sure that I have all sorts of questions pertaining to what you do for a living. If you do plumbing or drywall, you are cordially invited to come to my house and I will put you to work for a couple of days. The situation I have with a bad bathtub drain and my living room ceiling has gotten entirely out of hand. I also need some painting done, and a handle replaced on my patio door. If any of those are up your alley, please send me your travel plans.

Yes, "believe it or not" is a common expression which is used in all sorts of contexts. Whether the use in any given context does or does not implicate trademark-relevant considerations is a context-specific question. "STAR WARS" is a trademark of Lucasfilm for a bunch of stuff, and it is also a common term used for the Strategic Defense Initiative. If you can't distinguish between a trademark-relevant usage, and one which is not, I am not writing opinions on each of your Google results.

" Finally, I must consider whether Mr. Zuccarini acted with a bad-faith intent to profit from EB's marks, and if so, whether he is entitled to the protection of the safe harbor of § 1125(d)(1)(B)(2). In making that determination, I am guided by the following nine factors provided by § 1125(d)(1)(B):"

What is this "safe harbor"?

It is 15 U.S.C. § 1125(d)(1)(B)(2).

(although the section numbering in the ACPA was a little screwy... I think it should be (B)(ii)... but either way, that's the section)

Now, there is a wonderful index to the entire United States Code. It is called "Google". You drop in "15 USC 1125" and, boom, there it is.

 

[DNQuest.com]

Quote:
Originally Posted by ClaireB
Had I gone to check the whois and seen ripley's then I would have remembered their TV program and probably would have stayed away from the name because I have many things on my plate and never intentionally look for problematic situations.


Not too many domain owners, especially newbies, know that as well. But then,
ignorance of the law has never been really known to excuse anyone, either.

Superstation WTBS which is broadcast everywhere currently has Believe it or Not on about 15 times a week staring Dean Cain (As mentioned before, I like Jack Palance better).

The bottom line on this though, after all the wasted time on this thread, if you use Believe it or Not in a way that Ripleys had done (and they have a wide variety of usage), expect to be challenged. That is the bottom line. You can throw all you want to "support" your case, but you are wrong. Showing us a headlines or an articles that says believe it or not or just as general usage to tell a story WILL NOT help you in the courts if you are challenged.

 

[joeny]

THANK YOU , to all those who have wasted there time trying to convince someone that they are trademark infridging

I think Azoo the mod said it best in the post a couple before mine.

I don't need to be a lawyer to know , WOW

This domain , hmmmm kinda feels like I am riping some one off ....

When you get that feelin or 18 others tell youi its a bad choice ,

JUST pick a new one!!!!

Listen , I have been on the computer since I was 8 and now 32

I have seen so many things , not everything .......

But I am a true believer of one true phrase


Its not what your domain is called it what you make it

Look at craigslist for example , Right>?

If I was to try to sell that name 8 years ago people would be laughing so hard at me!

Now this is a huge domain worth tons of money


THE moral of my post is , Claire get a grip..

Pick a name and develop it , it you feel its in question then just dump the name and pick another......

Being original sells ,

Just my thoughts :cheeky:


Joe

 

[dtobias]

And "Google.com" and "Yahoo.com" would be thought of as near-worthless domains before they were made famous; and "amazon.com" would be thought of as of mild value for possible use for a feminist-related site or one regarding rain forests. It's all in what's ultimately done with the name, not just the intrinsic worth of the name beforehand.