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A company is threatening to cancel our trademark because it is generic?

Sacramento, CA |

My registered trademark is more than 5 years old. The potential party is claiming it is made up of two generic terms and does not indicate unique source. For example, it is a web-based software with the name "folderweb" that provides online access tools. I think it is unique because although folder and web are both generic on their own, I have been using it in the unique way as Folderweb and not "a webfolder". Doesn't this make it unique? Is this threat real? We had an attorney file it 7 years ago and have had no issues since. Is there a rule against combining two generic terms and making a new one that I should know about? They are saying that everyone in the industry has been using the terms as well, but not like us. Thank you.
We know we'll need a lawyer if they file.

Attorney Answers 6

Posted

The only challenge anyone can bring under your facts is whether you can continue to own the REGISTATION for your mark, not whether you can continue to use it. And to bring that challenge the person [or company] must establish that it has a legally cognizable interest in that question. Not everyone does. If you think the person [or company] will file a "cancellation" proceeding with the Trademark Office or a lawsuit in the federal court to challenge the validity of your registration then you should speak with your own trademark attorney soon. If this, however, is simply huffing and puffing then ignore the threats. On the merits of the matter, yes, two words which if seperate would be generic or merely descriptive of your goods or services may be protectable as a mark because, together, they are not generic or merely descriptive. Which the Trademark Office already concluded is the case in your situation because it granted the registration. I think this is much to do about nothing.

The above is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.

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Asker

Posted

"On the merits of the matter, yes, two words which if seperate would be generic or merely descriptive of your goods or services may be protectable as a mark because, together, they are not generic or merely descriptive." Okay, this makes me feel safe. They do have an interest because they compete with us, but I always thought too that you could combine the words. Thank you.

Asker

Posted

They said something ridiculous like it would be like saying a mark "foldercloud" is not generic. But we have had zero problems in 7 years.

Asker

Posted

They cited this in their email to us. I guess its not applicable? In re Christian Happenings Acquisition Corp., Ltd. "We find that the prefix “I” and the word “ticket” retain these common meanings when telescoped into the compound word “ITICKET,” and that the public would readily understand ITICKET to refer to ticket services offered on the Internet. “In this instance, the terms remain as generic in the compound as individually, and the compound thus created is itself generic.” In re Gould Paper, 5 USPQ2d at 1112. This compound term immediately and unequivocally describes applicant’s online ticket services. The genericness of the term is therefore established: [I]f the compound word would plainly have no different meaning from its constituent words, and dictionaries, or other evidentiary sources, establish the meaning of those words to be generic, then the compound word too has been proved generic. No additional proof of the genericness of the compound word is required. "

Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

You need to have your own trademark attorney consider all the facts and the content of the letter.

Clark AD Wilson

Clark AD Wilson

Posted

Since you are both in Sacramento, I highly suggest you contact Mr. Ballard. He is well versed in this area of law.

Michael Charles Doland

Michael Charles Doland

Posted

I have become familiar with all my colleagues who have responded to your posting. All are well respected by the Avvo community and the community of lawyers in general. I totally adopt the suggestion of Mr. Wilson - not to call Mr. Ballard who is also in Sacramento would be an error.

Posted

I also think this is a hollow threat and that order-reversal and combination of two generic terms is likely to withstand challenge. There is a step you should take if you have not yet, and that is to file a Declaration under 15 USC 1065 to make this mark "incontestable". That still leaves the mark subject to challenge as being generic, but removes many other grounds, such as likelihood of confusion, that your adversary, or others, might also allege should you fail to do that.

Anyway, as to your question whether there is a rule against combining two generic terms, think of the most famous microprocessor software company which did that and produced the world's richest man for many yearsand makes the operating system you are probably using to read this, Windows. MICROSOFT.

I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.

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They cited this in their email to us. I guess its not applicable? In re Christian Happenings Acquisition Corp., Ltd. "We find that the prefix “I” and the word “ticket” retain these common meanings when telescoped into the compound word “ITICKET,” and that the public would readily understand ITICKET to refer to ticket services offered on the Internet. “In this instance, the terms remain as generic in the compound as individually, and the compound thus created is itself generic.” In re Gould Paper, 5 USPQ2d at 1112. This compound term immediately and unequivocally describes applicant’s online ticket services. The genericness of the term is therefore established: [I]f the compound word would plainly have no different meaning from its constituent words, and dictionaries, or other evidentiary sources, establish the meaning of those words to be generic, then the compound word too has been proved generic. No additional proof of the genericness of the compound word is required. "

Posted

Years ago, I worked for the company that made a particular brand of acrylic plastic sheet. It was known as Plexiglas, that company's registered trademark. Because some folks started calling all acrylic plastic sheet "plexiglass," the company had a guy in the advertising department watch for articles in which the word was used in that way. His job was to send polite letters to the pertinent editors, reminding them that the correct usage of the company's trademark is "Plexiglas" with a single s and starting with as capital P. That was because a trademark can become generic over time if it is perceived by the public as a generic term. The folks at J&J do the same with the term Band-Aid, their brand of adhesive bandages.

So the point is that a term can start out as a valid trademark and later become so well known that the public regards it as a generic term. Eternal vigilance is the price of distinctiveness.

I recall reading a science fiction story years ago in which this phenomenon was parodied by the author. The protagonist was said to be staying at a "hilton." The author knew that this was a trademark today, but imagined a future in which the term had gone generic as another word for "hotel."

This posting is intended for general education and isn't "legal advice." It doesn't create or evidence an attorney-client relationship. You are encouraged to engage an attorney in the pertinent jurisdiction for confidential legal advice on matters of any importance. -Gerry J. Elman, J.D. Elman Technology Law, P.C. Swarthmore, PA www.elman.com

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Posted

They cited this in their email to us. I guess its not applicable? In re Christian Happenings Acquisition Corp., Ltd. "We find that the prefix “I” and the word “ticket” retain these common meanings when telescoped into the compound word “ITICKET,” and that the public would readily understand ITICKET to refer to ticket services offered on the Internet. “In this instance, the terms remain as generic in the compound as individually, and the compound thus created is itself generic.” In re Gould Paper, 5 USPQ2d at 1112. This compound term immediately and unequivocally describes applicant’s online ticket services. The genericness of the term is therefore established: [I]f the compound word would plainly have no different meaning from its constituent words, and dictionaries, or other evidentiary sources, establish the meaning of those words to be generic, then the compound word too has been proved generic. No additional proof of the genericness of the compound word is required. "

Posted

Some marks sadly go in this direction. As Mr. Ballard aptly noted, however, trademarks are considered as a whole and taken together two generic words combined may serve to overcome any generic aspects.

I see you are considered with the case law that the opposing party cited. In trademark law you can find cases that support almost any proposition or action. This does not mean it is likely they can accomplish what they are seeking and I can tell now with years of practice in this area of law that it is very rare indeed.

That said, you may choose to ignore them until formal action is taken, or you may want to have your own attorney conduct a proper analysis and send a response just so they know you are represented by counsel and are fully aware of your rights.

Most of us here, including myself, offer a free phone consult.

Best regards,
Frank
Natoli-Lapin, LLC
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The law firm of Natoli-Lapin, LLC (Home of Lantern Legal Services) offers our flat-rate legal services in the areas of business law and intellectual property to entrepreneurs, small-to-medium size businesses, independent inventors and artists across the nation and abroad. Feel free to call for a free phone consultation; your inquiries are always welcome: CONTACT: 866-871-8655 Support@LanternLegal.com DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed on the basis of this posting.

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Posted

Being that you are five years post-registration, there are two forms you may want to file with the USPTO. One is a “section 8 affidavit,” that states you are continuing to us the mark and are thus entitled to renewal. You must file between fifth and sixth anniversaries of registration or lose it. The other is a “section 15” affidavit that asserts under oath that your use in a specified class has been continuous for five years. It gives you “incontestability” except under a few narrow exceptions. The two may be combined under one form, there is a fee for it, and it may be done on line.

Given the threat you have gotten you would be wise to discuss a section 15 with a TM lawyer.

Licensed in Maryland with offices in Maryland and Oregon. Information here is general, does not create a lawyer-client relationship, and is not a substitute for consulting with an experienced attorney on the specifics of your situation.

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Posted

As the other lawyers have mentioned, you should absolutely go ahead and file for incontestability under Section 15 as soon as possible-- this will provide your potential opponents with a higher burden of providing your mark is generic. You may also want to consider what exactly the other party is aiming to get by threatening you. If you can understand that, it may make it easier to understand if there's an opportunity for settlement if a cancellation is brought.

Olinerlaw.com

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