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Where would one stand by registering a generic word with an inc, co, corp, llc, plc, ltd suffix, for example newsllc.com? Have the domain parked with the keyword of the generic word. Would there be TM issues?..

Comments (11)

My opinion is there isn't going to be a TM issue with your example...

Comment #1

By a cliff?.

Stu, you know there can still be issues if someone's using the word as a mark.

Distinctively in commerce. (oxymoron, I know...)..

Comment #2

Interesting case. I'll read it in detail when I get back from the beach..

Comment #3

Stub,.

I'd just check the USPTO database before registering and do a Google search for the name. Typically business names do not serve as marks unless the business uses the name as a mark to designate the origin of it's goods or services. If the mark is descriptive, they will still have to show that it has established secondary meaning in the minds of consumers over a long period of extensive use. This isn't really a question that has a binary yes/no answer. You will have to do your due diligence, make a good faith effort to find out if anyone is branding their products with the trade name, and then proceed cautiously...

Comment #4

Erm... "News Corp" is a major company... be careful.....

Comment #5

@ flamewalker - So. Would the owner of newsllc.com have a problem with newscorp if it was parked with the keyword news? assuming all references to newscorp were removed? OK. I'm back from the beach.

I understand that. But does that give the right of newscorp to go after all the other suffixes? I understand it might be a bit more difficult if there is in existence a NEWS, LLC, already. Which really is the question I'm addressing. Would they have prior use trademark rights to newsllc.com, if (for example) they were registered in Delaware with the name News, LLC, and if they owned news.com or something similar (for example).

Now I go read the decision, John posted..

Comment #6

IMHO you would be treading thin ice...not worth the risk if you ask me regarding that specific case...

Comment #7

You mean if they promote themselves distinctively as NEWS LLC? Rather than just a purveyor of news?..

Comment #8

And here we come to the essential difference between a "trade name" and a trademark.

Note the following registered trademark for a logo: http://tarr.uspto.gov/servlet/tarr?r...entry=75011712.

Note the expressly disclaimed generic matter in the mark (in bold below):.

Word Mark NEWS CORP.

Goods and Services IC 042. US 100 101. G & S: providing multiple-user access to a global computer network for the transfer and dissemination of entertainment, music, information, shopping book reviews, television and movie reviews, interactive trivia and multiplayer games, and the advertisments of others. FIRST USE: 19950900. FIRST USE IN COMMERCE: 19950900.

Mark Drawing Code (3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS.

Design Search Code 01.07.02 - Globes with meridians and parallels only.

Serial Number 75011712.

Filing Date October 30, 1995.

Current Filing Basis 1A.

Original Filing Basis 1A.

Published for Opposition March 18, 1997.

Registration Number 2078510.

Registration Date July 15, 1997.

Owner (REGISTRANT) NEWS CORPORATION LIMITED, THE CORPORATION AUSTRALIA 2 Holt Street Sydney, New South Wales AUSTRALIA 2010.

(LAST LISTED OWNER) NEWS HOLDINGS LIMITED CORPORATION AUSTRALIA 2 HOLT STREET SYDNEY, NEW SOUTH WALES AUSTRALIA 2010.

Assignment Recorded ASSIGNMENT RECORDED.

Attorney of Record Stacy J. Grossman, Esq. Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "NEWS CORP" APART FROM THE MARK AS SHOWN.

Type of Mark SERVICE MARK.

Register PRINCIPAL.

Affidavit Text SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20070808..

Renewal 1ST RENEWAL 20070808.

Live/Dead Indicator LIVE.

Now, in a later application, News Corp attempted to demonstrate acquired distinctiveness in the "NEWS CORP" part of the mark.

The USPTO refused, stating in pertinent part:.

Applicant must also disclaim the generic wording News Corp apart from the mark as shown because it merely describes applicants business. The phrase news corporation is commonly used to refer to corporations that specialize in media issues. Please see the attached evidence consisting of seven websites and ten articles from the LexisNexis database, which show the generic use of the phrase news corporation in this manner. In addition, the term news is defined as information about recent events or happenings, especially as reported by newspapers, periodicals, radio, or television. b. A presentation of such information, as in a newspaper or on a newscast.

New information of any kind. Please see attached definition. As such, the term news is descriptive of applicants services in that applicant provides entertainment programs featuring news. Also, please see the attached evidence from five websites, which show the descriptive use of the term news in connection with services identical to those of the applicant, as well as ten printouts from the USPTO X. Search database showing disclaimers for the term news in relation to marks for services identical to those of the applicants. This evidence shows that the term news is generic in relation to applicants services.

1056; TMEP 1213 and 1213.03(a).

Also, terms such as Corporation, Inc. and Ltd. must be disclaimed because they merely specify applicants entity type and do not function as a trademark or service mark to indicate source. See In re Patent & Trademark Services, Inc., 49 USPQ2d 1537, 1539-40 (TTAB 1998); In re Industrial Relations Counselors, Inc., 224 USPQ 309, 310 n.2 (TTAB 1984); In re E. I. Kane, Inc., 221 USPQ 1203, 1206 (TTAB 1984); In re Packaging Specialists, Inc., 221 USPQ 917, 919 (TTAB 1984); TMEP 1213.03(d).

The computerized printing format for the Offices Trademark Official Gazette requires a standardized format for a disclaimer. TMEP 1213.08(a)(i). The following is the standard format used by the Office:.

No claim is made to the exclusive right to use News Corp apart from the mark as shown.

See In re Owatonna Tool Co., 231 USPQ 493 (Commr Pats. 1983).

The Office can require an applicant to disclaim exclusive rights to an unregistrable part of a mark, rather than refuse registration of the entire mark. Trademark Act Section 6(a), 15 U.S.C. 1056(a). Under Trademark Act Section 2(e), 15 U.S.C. 1052(e), the Office can refuse registration of the entire mark where it is determined that the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods. Thus, the Office may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic).

If an applicant does not comply with a disclaimer requirement, the Office may refuse registration of the entire mark. TMEP 1213.01(b).

A disclaimer is thus a written statement that an applicant adds to the application record that states that applicant does not have exclusive rights, separate and apart from the entire mark, to particular wording and/or to a design aspect. The appearance of the applied-for mark does not change.

A disclaimer does not physically remove the disclaimed matter from the mark, but rather is a written statement that applicant does not claim exclusive rights to the disclaimed wording and/or design separate and apart from the mark as shown in the drawing.

Please note that even though registration of the mark is sought on the Principal Register under Section 2(f), the Office still requires applicant to disclaim Corp because such wording is merely a generic term for applicants organization as discussed above. It is also an entity designation and has no trademark significance. In re Wella Corp., 565 F.2d 143, 196 USPQ 7 (C.C.P.A. 1977); In re Creative Goldsmiths of Washington, Inc., 229 USPQ 766 (TTAB 1986); In re Carolyns Candies, Inc., 206 USPQ 356 (TTAB 1980); TMEP 1213.03(b).

Claim of Acquired Distinctiveness.

Applicants Section 2(f) in part claim as to NEWS CORP is unacceptable.

Applicant must establish acquired distinctiveness by a preponderance of the evidence. Yamaha Intl Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988).

The Office will decide each case on it's own merits.

The amount and character of evidence needed to establish acquired distinctiveness depends on the facts of each case and particularly on the nature of the mark sought to be registered. See Roux Laboratories, Inc. v. Clairol Inc., 427 F.2d 823, 166 USPQ 34 (C.C.P.A. 1970); In re Hehr Mfg. Co., 279 F.2d 526, 126 USPQ 381 (C.C.P.A.

More evidence is needed where a mark is so highly descriptive that purchasers seeing the matter in relation to the named goods and/or services would be less likely to believe that it indicates source in any one party. See, e.g., In re Bongrain International Corp., 894 F.2d 1316, 13 USPQ2d 1727 (Fed. Cir. 1990); In re Seaman & Associates, Inc., 1 USPQ2d 1657 (TTAB 1986); In re Packaging Specialists, Inc., 221 USPQ 917 (TTAB 1984). However, no amount of purported proof that a generic term has acquired secondary meaning can transform that term into a registrable trademark.

See Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75, 195 USPQ 281 (7th Cir. 1977), cert.

1025, 196 USPQ 592 (1978).

Because all of the words in applicants mark are generic as used with the services they cannot be registered as a trademark under section 2(f)...

Comment #9

If I am reading John's response correctly, They were denied the "News Corp" tm because they ignore the "corp, llc, inc" etc when considering a tm, thus leaving "News", which is unregisterable as a TM. Not to mention "News" is merely descriptive of the services they provide.

Even though they don't have a tm on news corp or news, doesn't mean they won't try, but at least you will be on the receiving end of a very weak if not impossible case (imho). A good udrp/trial lawyer would/should be able to defend you fairly easily if, say, news corp were to come after you for newsllc.com. At least one would think...

Again, my opinion only.

EDIT: I guess this is fair warning to those who wish to use a descriptive term as their company name, that chances are slim you will not have a TM to fight for... unique name/word combos are best as long as there isn't an existing TM. Consult of an IP lawyer would be good before regging a business name/TM...

Comment #10

BTW. newsllc.com was just an example. I don't own that one. But thanks for all your comments...

Comment #11


This question was taken from a support group/message board and re-posted here so others can learn from it.

 

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