Trademark Question

Discussion in 'Legal Issues' started by mattodue, Jan 13, 2010.

  1. #1
    I'm trying to understand the following:

    No claim is made to the exclusive right to use "Word1 Word2" apart from the mark as shown.

    Considering Word1 Word2 is the name of the business, what exactly would be the trademark if they required that disclaimer? In other words, what would be the point of the trademark if you don't have exclusive rights to your name? I can see if they required only Word1 or only Word2, but both? I haven't had much luck finding any info on this. Any insight would be greatly appreciated! Thanks!
     
    mattodue, Jan 13, 2010 IP
  2. browntwn

    browntwn Illustrious Member

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    #2
    Sometimes the mark may be included in other marks and they are merely saying that they are not saying anyone else can't use that part. Here is one example:

    Typed Drawing
    [B]Word Mark 	AVE MARIA SCHOOL OF LAW[/B]
    Goods and Services 	(CANCELLED) IC 016. US 002 005 022 023 029 037 038 050. G & S: printed materials and publications, namely, printed instructional and educational materials, in the field of religion. FIRST USE: 20000223. FIRST USE IN COMMERCE: 20000223
    
    IC 025. US 022 039. G & S: clothing, namely, T-shirts, sweatshirts and caps. FIRST USE: 20000223. FIRST USE IN COMMERCE: 20000223
    
    IC 041. US 100 101 107. G & S: educational services, namely, providing courses of instruction at the graduate level. FIRST USE: 20000223. FIRST USE IN COMMERCE: 20000223
    Mark Drawing Code 	(1) TYPED DRAWING
    Serial Number 	75664852
    Filing Date 	March 19, 1999
    Current Filing Basis 	1A
    Original Filing Basis 	1B
    Published for Opposition 	November 2, 1999
    Change In Registration 	CHANGE IN REGISTRATION HAS OCCURRED
    Registration Number 	2553185
    Registration Date 	March 26, 2002
    Owner 	(REGISTRANT) AVE MARIA SCHOOL OF LAW CORPORATION MICHIGAN 3475 PLYMOUTH ROAD ANN ARBOR MICHIGAN 48105
    Assignment Recorded 	ASSIGNMENT RECORDED
    Attorney of Record 	PAUL R. FRANSWAY
    Disclaimer 	[B]NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "SCHOOL OF LAW" APART FROM THE MARK AS SHOWN[/B]
    Type of Mark 	TRADEMARK. SERVICE MARK
    Register 	PRINCIPAL
    Affidavit Text 	SECT 15. SECT 8 (6-YR).
    Live/Dead Indicator 	LIVE
    Code (markup):

    As you can see, they are making no claim to the word "school of law" except as it is part of "AVE MARIA SCHOOL OF LAW".

    The other thing is that some trademarks on based on the stylized graphics and not on just the word. So I have a fancy way of writing "ICE CREAM" I could trademark that logo, but make no claim on the words "ICE CREAM".
     
    browntwn, Jan 13, 2010 IP
  3. mattodue

    mattodue Greenhorn

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    #3
    Yeah..that's what I figured.

    Unfortunately, in my case, it kind of defeats the purpose of a trademark. This two word phrase (my business name) can actually describe multiple things, so I'm not sure why they wouldn't allow it for my business. I can only assume that because it's a general description...they won't allow it...who knows! Alright, thanks for the reply.
     
    mattodue, Jan 13, 2010 IP
  4. dadaas

    dadaas Well-Known Member

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    #4
    you could just put a word in here and we could tell you if its trademark.

    Trademarks are invented words by companies, they cant use trademark on words that have common meaning. As well there is an trademark search website which i unfortunately forgot now. But google it, you find it and you can search your word there.
     
    dadaas, Jan 14, 2010 IP
  5. bluemouse2

    bluemouse2 Well-Known Member

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    #5
    a trademark is what makes you different from your opponents - so generic names cannot be a trademark if they are used in the same area - for example you cannot trademark "grocery store" if you own such a store or "computer games" to sell games - but you could trademark that for a music band or for a newspaper name
    but if you come with something like "Xtyzerd grocery store" now that's a different story because it makes you different from the other grocery stores available. hope that helps.
     
    bluemouse2, Jan 14, 2010 IP
  6. Dave Zan

    Dave Zan Well-Known Member

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    #6
    Shell.

    Tide.

    Head and Shoulders.

    They're words that have common meanings. Yet they're also trademarks.

    Unless you meant something else?
     
    Dave Zan, Jan 14, 2010 IP
  7. mattodue

    mattodue Greenhorn

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    #7
    Thanks for the input!

    Actually, I did already register for the mark, so I'm good thanks.

    Even if the generic phrase can be used to describe many different products/services..not just the one I've applied for?

    I'm pretty sure this is the reason that the disclaimer that was required, but wanted to get some other input.

    That's what I'm trying to avoid from happening all together! LOL


    I think what he was saying was common meanings for the business and/or service.

    For example, Shell could not be trademarked for: "an enclosing case or cover."

    I wonder if I would have any luck disputing the required disclaimer, since this two word phrase can have multiple definitions/meanings?
     
    mattodue, Jan 14, 2010 IP
  8. bluemouse2

    bluemouse2 Well-Known Member

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    #8
    but you can use shell to sell sea shells I suppose
    "Sea Shell Store" :)
     
    bluemouse2, Jan 14, 2010 IP
  9. nestria

    nestria Peon

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    #9
    Sounds like a question for a lawyer, but I'd imagine that "Office Depot" could be trademarked in a way that limits competitors from using the same name in the same line of business. I'd also guess it doesn't preclude "Office Max" from operating in that line of business.

     
    nestria, Jan 15, 2010 IP
  10. mattodue

    mattodue Greenhorn

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    #10
    Yeah..I think your right about that! :)

    I've never done this and don't really don't know much about trademark law. That disclaimer is what is really throwing me off!

    What I meant to say earlier was:

    This two word phrase (my business name) can actually describe multiple things, so I'm not sure why they wouldn't allow "exclusive rights" for my business. I thought that was the whole point of a trademark?

    I'm still wondering though, with that disclaimer in place...what am I actually trademarking? Can a competing business still use that two word phrase?

    I don't care if a non-competing business uses that term (my business name), for an unrelated product....and I just assumed that was the purpose of a trademark.
     
    Last edited: Jan 16, 2010
    mattodue, Jan 16, 2010 IP
  11. mattodue

    mattodue Greenhorn

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    #11
    I would have assumed that Office Depot would have been required to put a disclaimer:

    No claim is made to the exclusive right to use "Office" apart from the mark as shown.

    Same with Office Max....

    Interesting...I just checked and there is no disclaimer for their mark.

    Now, I'm even more confused. :confused:
     
    mattodue, Jan 16, 2010 IP
  12. mattodue

    mattodue Greenhorn

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    #12
    Ok, I take it back..there are a couple registrations there. They do have this..

    NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "OFFICE" APART FROM THE MARK AS SHOWN

    Which brings me back to my original point of the post. I could understand if they asked me to add a disclaimer for 1 word, but both is what throws me off.

    I wonder how they were able to trademark Office Depot? Both are generic descriptive words.
     
    mattodue, Jan 16, 2010 IP