Is your “trademark” really a “trademark” – or is it merely a generic term in your industry?
A recent case points out the pitfalls of highly descriptive designations serving as trademarks. Basically, the case involves a pizza maker plaintiff trying to get other pizza makers to stop using the phrase “Brick Oven” on their pizza packaging. The plaintiff lost. The phrase “Brick Oven” as it relates to pizza was found to be generic and not protectable. Why does it matter and what can be done?
1. If your mark is generic, be prepared to share it with others in your field. Don’t be surprised when it keeps popping up in the advertising of others.
2. If you don’t want to share the mark, pick something that identifies the SOURCE of the product and not just some CHARACTERISTIC of the product.
An important question is what the phrase means to buyers in your market – not just what is means to you. Consumer perceptions, and not subjective intent, are key.
In relation to a different topic, what somebody in the position of the pizza maker needed was NOT primarily the "cheapest" way to get a trademark. What might be better is some good advice as to whether to treat the phrase as a trademark at all. You can`t get that from a "dirt cheap" or "automated trademark filing" legal service. You can save the money and get it filed cheap - only to find out you have WASTED EVERY PENNY YOU SAVED by doing it at all.
James Lindon, Ph.D. Patent Attorney
Lindon & Lindon, LLC
Patents, Trademarks, Copyrights, Pharmacy Law, Litigation
[this is not legal advice - provided for discussion only]
Intellectual Property for the Individual and Small Business: Identify, Protect, Enforce, Defend.
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