Trademark

August 9, 2009 6:59 AM

Trademark issues

I know YANAL, but I'm just fishing for some general information. I will likely hire an attorney at some point.

We have a new product, let's call it MyGizmo.

We intend to trademark "MyGizmo" (in the US). It appears to be available after a search on the USPTO site. So, given that we do that:

1. We have the domain name MyGizmo.net (MyGizmo.com was not available, someone is just sitting on it, no pun intended). Should we trademark "MyGizmo.net" and even "MyGizmo.com"

2. Ignoring patent issues, could someone trademark something like "My-Gizmo" and start manufactuing a similar product?

posted by allelopath to law & government (8 answers total)

IANYL.

1) Should we trademark "MyGizmo.net" and even "MyGizmo.com"?

U.S. trademark law protects only marks that are legitimately in use. (U.S. law does not permit you to register trademarks simply in order to prevent others from using them.) You will be unable to obtain any valid USPTO registration on these terms if you are not using them as trademarks (additionally, domain names—even if you are using them --cannot be registered as trademarks unless and until the full domain name gains at least some recognition as a trademark).

2) Could someone trademark something like "My-Gizmo" and start manufactuing a similar product?

If by "could someone trademark?" you mean "could someone register a trademark?" the answer is yes, someone could apply for and obtain a registration after you do (the USPTO will probably not grant two "confusingly similar" marks in the same goods and service class, but the USPTO is not perfect). Whether or not you would own superior rights that would permit you legal recourse against such a party (e.g. to invalidate their registration, seek an injunction to stop them marketing a similar product with the name, etc.) would depend on whether you filed your trademark application first and/or whether you were first to use your mark in commerce.
posted by applemeat at 7:34 AM on August 9, 2009

>>You will be unable to obtain any valid USPTO registration on these terms if you are not using them as trademarks
Does that mean that the physical product must exist first?
posted by allelopath at 7:45 AM on August 9, 2009

Read this. See "What is 'intent to use'?"
posted by applemeat at 7:53 AM on August 9, 2009

Does that mean that the physical product must exist first?

Trademarks are intended as source identifiers. "MyGizmo.com" is not identifying the source of anything you produce and, therefore, you cannot trademark it. (Disclaimer: That's not rigorous legal analysis, just a way of thinking about the question)

Put another way: you can't trademark a domain name in order to take it from someone.
posted by toomuchpete at 2:29 PM on August 9, 2009

>>you can't trademark a domain name in order to take it from someone
That's fine, it means they can't take our domain name.
posted by allelopath at 4:21 PM on August 9, 2009

Another question:
Is their any advantage to changing the conventional spelling of words for a product name.e.g.
If I had a choice between "Windows" and "Windoze", is the latter somehow a stronger trademark?
posted by allelopath at 7:23 PM on August 9, 2009

A trademark is for a name (or image) that identifies your company or one of its products. AT&T, Mickey Mouse, etc. You don't trademark a product, you trademark its name. To protect the product, you get a patent.
posted by gjc at 7:56 PM on August 9, 2009

If I had a choice between "Windows" and "Windoze", is the latter somehow a stronger trademark?

Using an unorthodox spelling may make for a stronger (or more easily registered--which is not necessarily the same thing) trademark/registration, or it may conversely lead to a weaker and more narrow trademark/registration that may not prove as useful against infringers. Sometimes it’s a marketing preference that makes little legal difference at all (and perhaps especially to your USPTO examiner).

Unfortunately, it’s not possible to answer your question without knowing more information, e.g. what your trademark is, what other registrations and common law trademarks already exist in your marketplace, and perhaps most importantly how descriptive of your product your trademark is. (In your "Windows/Windoze" example, "Windows" is arguably a far stronger mark--but that's in large part because Microsoft’s product has nothing to do with construction plate glass.)

Now would be a good time for you to find someone who is your attorney.
posted by applemeat at 10:41 AM on August 10, 2009