Forums: Discussions for entrepreneurs and small business.

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.

 

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James Lindon, Ph.D. Patent Attorney
Lindon & Lindon, LLC
Cleveland, Ohio
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.
"Fools rush in where angels fear to tread."
http://www.LindonLaw.com

My Phrase Is  "The Honor Of  Kings Is Found In The Laughter Of The Children".-drv.7/29/6  QUESTION: Do I copywrite it outwrite on a form for a singular quotation or is it better to contact a company who specializes in quotes and famous sayings, and who will process the information in a timely manner, giving full credit to the author and also providing a notation for access to the appropriate research database.   

I don`t understand the question.  Do you want to be able to sue somebody every time they write or speak that sentence?  If so, I would suggest you do nothing since you would be wasting your time.  How do you propose to make money with those words?

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James Lindon, Ph.D. Patent Attorney
Lindon & Lindon, LLC
Cleveland, Ohio
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.
"Fools rush in where angels fear to tread."
http://www.LindonLaw.com

It was a question of copywrite protection to insure that it is a quote from me instead of someone else. Great sayings are not easy to determine who said it first. That`s all. I`ll just seek to copywrite it and that`s it. It`s not a trademark. I guess "can i protect my phrase?" was specifically for trademarks.

Is that in any way related to the post that started this thread?

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James Lindon, Ph.D. Patent Attorney
Lindon & Lindon, LLC
Cleveland, Ohio
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.
"Fools rush in where angels fear to tread."
http://www.LindonLaw.com

You`re kidding, right? This question appears to be directly related to the topic.

Or were you just introducing this idea to source new business?

Another very interesting case involved Intel and their chip names. As some may remember, computers used to have a 286, or 386, or 486 processor name/type. Intel wanted to trademark the number, starting with the 586 chip. The courts found that you cannot trademark a number, and so Intel created the name "Pentium," refering to the five (penta-) of the 586.

The Pentium went far beyond the 500 series of processor speeds, but still used essentially the same architecture. Now, with the dual-core Itanium processors, they`ve trademarked the term "Dual Core." It walks the edge between a generic term and one very specific to a chip architecture.

Trademarking a phrase, like chaining up a bicycle, begs the question, "So what? Who cares?" Why not wait until your product is so well known that even if someone else "steals" the phrase, all they accomplish is to further advertise YOUR product! Remember "Where`s the beef?"

"You deserve a break today," assigned to any other product is pointless. The public immediately will think of McDonald`s, and buy more McDonald`s hamburgers. Instead of worrying about trademarking a phrase, wouldn`t it be better to focus on getting the phrase into pop culture and associating it specifically to your product? The best that could happen would be for Jay Leno to "steal" the phrase and make a joke about it. From that point forward, everyone would know your product and wonder how to find out more about it.

The topic is generic trademarks to sell goods.  the post by frndchps is about a copyright on a "great saying" to do I don`t know what.  the connection is ..... what?

The post by CraigL is directly on topic.  His comment is about timing.  In response to CraigL who IS on topic, timing is a legitimate question.  A similar question would be "why not wait until just before a stock goes up in price to buy it?"  Yes, that would be preferred to the more speculative practice of registering a trademark before it becomes well know and allowing it to grow in value over time.  Predicting that exact timing is very difficult.  At the same time, registration can sometimes help the mark to become well known.

I also agree that if there was a way to focus on getting Jay Leno to give the business owner some free publicity, I would suggest to clients to do that too.  How does one go about doing that?  Also, once the Jay Leno tells the joke, you will have to stand in line with all those other people who want to immediately register the mark or domain name or something similar.

There is no law requiring trademark users to register.  Thousands of small business owners do it every year for a reason - I think a good reason.  The point of the topic is trademark selection - it can`t be too generic unless of course you want to battle your entire industry over it - like the "brick oven" example.

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James Lindon, Ph.D. Patent Attorney
Lindon & Lindon, LLC
Cleveland, Ohio
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.
"Fools rush in where angels fear to tread."
http://www.LindonLaw.com

If you`re familiar with Napolean Hill author of "Think and Grow Rich" and you have had a run in with their lawyers-- they`ve gone off the deep end.  They seem to think they own the rights to anything Napolean Hill may ever have said at any time, ever.

The specific issue they challenged me on (and lost) was the term "Mastermind".  On my site, we describe a segment of our investor association meetings-- the "Burning Questions" segment as a place where you can "use the power of the mastermind to solve problems" etc.  So, they sent me a cease and desist.  My attorney responded and basically told them that they had no case and cited an King James Bible sized stack of case law-- the term is commonly used, is a word in the Dictionary, and did not originate with Hill.

I have a question for the OP-- what if you`re too good?  For example, what about products like Xerox and Kleenex that have become synonymous (SP?) with the products they represent?  I mean, you could have a biggest box of Puffs sitting on your coffee table, and someone might still say "I need one of those Kleenex"

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Paul Strauss
www.ChicagoSuperConference.com

Letter from frndchps: Thank you James for the clarification. Thank you Brand Alchemy for the defense. I say that a "great saying" used in promoting your brand concept is a wonderfull way to sell yourself and your products. I have a vision of P.S.O. content for DannyBrand. For this post...how about I ask whether a Company who has already established their name can apply for any word or phrase that represents a product, so long as their is no conflict and the product is being sold. Further more, I am quite perplexed as to the following puzzle. In 1969 Frito Lay acquired the trademark for Friendchips. Not until, i believe, 2004, did they use it for the potato chips product. How is it that they kept it live for so many years without using it as a first use or first sale product introduction. Is this some type of Grandfathers clause? Oh....it don`t matter so much. I intend to contact privately , the people of this forum for insight on collaboration and partnership, rather than debate semantics of how you percieve the interpretation of subject matter for the lifting of your ego.