Forums: Discussions for entrepreneurs and small business.

Sorry about that – I could not resist.  Colt lost big time recently with a dispute about its M4 rifle.  Colt thought the M4 designation let people know that the gun was made by Colt.  When Colt found another company [Bushmaster Firearms, Inc] saying the M4 was a type of rifle, and not a trademark for a type of gun made by Colt, Colt sued.  Colt lost.  Colt really lost.  Not only did Bushmaster not have to stop using the term M4 to refer to its type of gun, Colt also has the M4 mark declared generic.

 

“Bushmaster presented evidence that the relevant consuming public continues to associate M4 with the military designation for a carbine that has certain characteristics.”  When this happens, the trademark is basically dead.  Trademarks don’t designate types of products.  Generic terms designate types of products.  Trademarks designate the sources of products/services.  Once the trademark does designate a type of product it stops being a trademark and the whole industry can use that trademark.

 

The more members of the public see a term used by competitors in the field, the less likely they will be to identify the term with one particular producer.  Is your mark getting caught in a generic trap?  How do you use it?  How do others use it?

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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

Oh, that`s funny.

Reminiscent of Intel attempting to trademark "80486" for their chip series. 

What Colt did wrong was to not protect the trademark in the first place - the lawsuit wasn`t wrong, it was simply too late.

Protecting IP needs to happen early, not after the marketplace usage defines the mark as common usage.

Good example is Styrofoam. Did you know that Styrofoam cups don`t contain the product Styrofoam at all? But they had the sense to seek USPTO approval early on, before the mark became commonplace. Thus they are suing the hell out of lots of cup makers, and winning.

Moral of the story, in my view, is trademark early, then pursue violations. Don`t wait until, for example, "CraigL" is associated with, um, `long-winded`. By then, it`s too late!

WHAT?!! Long-winded? Moi?  I`ll trademark "Long-Winded" before some mountain resort grabs it!

CraigL: Move fast. `Blow Hard Estates` files in the morning... 

I come from a long line of people filled with wind. I`m not worried.

What Colt did wrong was to use the term M4 generically and not object when others did so.  It was partly about timing and partly about their own mistakes and misuse of their trademark.

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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

Okay, so what`s the difference between the name "M4," and the name "aeroplane?" In other words, why couldn`t the Wright brothers have trademarked or copyrighted the term (supposing they`d come up with it)?

The name of a thing can`t function as a trademark for a company selling that thing - be it a type of rifle, travel machine, etc..

-------------------------

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