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.
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.
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.
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."
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.
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.
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.
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