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Trademark search and descriptive name

Los Angeles, CA |

Is it possible to trademark the term womenentrepreneurs? I did a search on the USPTO with this term and was surprised to see that already people have trademarked this term? How can this be?

Attorney Answers 3

Posted

The name may have acquired secondary meaning, among other possibilities.

The above is general legal and business analysis. It is not "legal advice" but analysis, and different lawyers may analyse this matter differently, especially if there are additional facts not reflected in the question. I am not your attorney until retained by a written retainer agreement signed by both of us. I am only licensed in California. See also avvo.com terms and conditions item 9, incorporated as if it was reprinted here.

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Posted

Yes indeed a phrase like this can be registered as a trademark. It is descriptive, but it probably is not generic. While it is improper to register a generic word or phrase as a trademark ("escalator"), descriptive phrases can be registered and enforced, particularly where they are associated with strong "secondary meaning" in the minds of consumers. This does not mean that it would be easy to enforce such a trademark in court against infringers. The fair use doctrine might allow broad use of the phrase "woman entrepreneurs" for many purposes even if such use would theoretically conflict with the trademark. Nonetheless, there is nothing unusual or improper about trademark registration for a descriptive trademark such as "womenentrepreneurs".

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4 comments

Asker

Posted

So can I have a domain with womenentrepreneur? Or do I need to pick another name?

Maurice N Ross

Maurice N Ross

Posted

This depends on how, where and in what context you use the name. The issue is whether your use of the name will create a likelihood of consumer confusion with the owner of the trademark. If so, you should pick another domain name.

Asker

Posted

I am looking to create a site that provides a lot of articles about topics that are related to women entrepreneurship. The topics will range from online marketing to start ups tips. I will monetize the site with advertising. There also would be a networking element where someone can create an online profile about them self. Their will be an about me, business information and website to promote them self on the site. Is it best to continue with womenentrepreneur or pick a new name?

Maurice N Ross

Maurice N Ross

Posted

You need to retain IP counsel before creating a web-site. This issue is the tip of the iceberg. You will face dozens of similar issues. I cannot possibly advise you concerning the best way to brand your company without knowing much more information. You need to understand something important---you are going into the publishing business. There is a reason why most top executives of publishing companies have law degrees and were practicing lawyers. Your business is all about law---legal issues permeate your operation from top to bottom on a daily basis. You need to develop a relationship with intellectual property counsel---and you need an adequate budget for this. It would be a huge mistake to attempt to use a web-site like this as a surrogate for the counsel you need. Most publishers (whether web-based or otherwise) have teams of in-house lawyers. While I understand that you are a start-up entrepreneur, your obligations and risks are no different than a major established web-site operator. You need to retain legal counsel as soon as possible. I am available for a brief free consultation---but you need to be realistic about budgeting. You need a lawyer and this will cost you more than a few thousand dollars.

Posted

I would have thought this was descriptive, if not generic, myself, but as has been pointed out, it could have acquired secondary meaning through consistent long term and well advertised use by a party in one or more classes.

Having done zero research, I would have expected efforts to register a mark like "Women Entrepreneurs" to start out on the "Secondary Register" - after five years there it will be presumed to have acquired secondary meaning - during which time a registrant can use the circled R to identify it - and then the mark could be moved to the principal register.

In any case, was it spelled all one word exactly as you wrote it? Was it stylized in some way? Sometimes these kinds of tweaks help a bit - but not always.

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2 comments

Asker

Posted

I did a trademark search from the USPTO. Let me know if womenentrepreneur is a domain name that I can use? Or should I pick a new name?

Brian Kenneth Dinicola

Brian Kenneth Dinicola

Posted

If someone has registered the mark, as you already stated, then you will eventually be confronted with an demand to give up the website. I would pick a new name and make it easy on yourself.

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