Is common law tm enforceable if the name is merely descriptive/cannot be registered?

[Area52]

That is, the name/phrase can't be registered with USPTO because it is generic, describes the actual products that the business sales and is widely used in the industry. My thought is that a common law tm is not enforcable under these circumstances., which would not preclude a competitor from using the same or similar name/phrase with an alternate tld extention from doing business handling the same type of products. The exception would be, displaying the competitor's ads w/o permission, of course. What is your opinion?

 

[David G]

What could be more generic than For Sale By Owner ?

It's a registered trademark believe it or not owned by ForSaleByOwner.com

 

[chipmeade]

As Mr. Green mentions, A common law trademark is different than a generic term/phrase. Generic terms cannot be TMed as they relate to their standard/generic meaning. (i.e. Coffee Pot for a Coffee Pot type of usage. You can use it, just can't be TM protected. If you wanted to Call your software company Coffee Pot, because it is distinctive and unique to that industry, you could get a TM. A common law TM is where you have not applied or gotten a TM from the patent office but have established its use for any period of time. You could block a TM application on grounds of you having common law tm. If you do not block the application and the patent official does not find your company in their research, they could get a TM for those terms but you would be able to keep doing what you are doing with evidence that you have a common law tm. You could not typically try and enter Their arena/geographic area and use your TM though.

 

[Brett Lewis]

There's an even more basic distinction between generic and descriptive marks. A descriptive trademark starts off lacking distinctiveness, but can acquire distinctiveness through use in commerce. It really depends on what the name or phrase is. Also, a common law trademark is a trademark. A generic mark can never function as a trademark, however, one could possess rights in a common law descriptive mark, and could apply for registration of a descriptive mark, although, unless it has acquired distinctiveness through use in commerce, the registration would likely start out on the Supplemental Register.

So, to answer your question, yes, common law descriptive marks can be enforced, but it depends on the specific facts and circumstances of each mark.

Brett E. Lewis
www.Lewishand.com
www.TrademarkAttorneys.com

 

[hadjin]

I have a question about TMs. Can I use a TMed name like say, "Ford", and add "airplanes" to a domain ? My reasoning is that Ford is not associated or known for making Airplanes. If not, how about adding "Parts", for aftermarket sales. Example... "FordAirplaneParts.ext" ?

Or does any use of a TM in a domain name area which can only reasonably be argued to be within the sphere of the TM company's business or percieved business become a violation and therefore squating ?

Thank you very much

 

[Theo]

One might argue if your name is Ford and you make airplanes you could do that. However, research the case of Mr. Nissan who sells computers and he's been fighting with NISSAN for the past 10 years over the domain name http://nissan.com

I have a question about TMs. Can I use a TMed name like say, "Ford", and add "airplanes" to a domain ? My reasoning is that Ford is not associated or known for making Airplanes. If not, how about adding "Parts", for aftermarket sales. Example... "FordAirplaneParts.ext" ?

Or does any use of a TM in a domain name area which can only reasonably be argued to be within the sphere of the TM company's business or percieved business become a violation and therefore squating ?

Thank you very much

 

[hadjin]

Arco, thanks for the reply. Perhaps this has already long ago been discussed here on other threads, so I apologise in advance and will look on the site for other guidance.

But, regarding Mr. Nissan.... In his situation, he is not identifying his particular business. If he were to use the name "NissanComputers.ext", I think it would be more persuasive for his case since the Nissan automobile company is not identified with computers and there is less chance of confusion in the marketplace over who this particular "Nissan" is.

I ask the question because, although I have no personal familial connection to anything named "Ford", I am conflicted about the permissibility of using a TMed name as one of the component words of a 2 or 3 word domain which intentionally uses the same name but on a product that the MFG does not offer, even though one could concieve of them possibly making it. That is why I asked about "FordAirplanes" or "FordBicycles".

Perhaps the Trademark attorney will see this and chime in to provide a fast and obvious answer ?

Thank you for taking the time to reply

One might argue if your name is Ford and you make airplanes you could do that. However, research the case of Mr. Nissan who sells computers and he's been fighting with NISSAN for the past 10 years over the domain name http://nissan.com