What is a Generic Trademark?

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Everyone knows what an escalator is. The word escalator is a term used to describe a moving staircase. But what many people don’t know is that back in the 1940s, the word “ESCALATOR” was a trademarked name owned by the Otis Elevator Company.  That meant the term could not be used in the general sense to describe a moving staircase and was intended to identify the source of a particular type of moving staircase manufactured by Otis. However, this changed when in the landmark case Haughton Elevator Co. v. Seeberger, the court concluded the word “ESCALATOR” constituted a generic term for a moving staircase, thereby extinguishing the term’s original trademark status.

A trademark is rendered generic when the trademark is used to identify the actual product or service as a whole rather than identification of the source of the product or service.  In other words, a mark becomes “genericized” when it is used by the general public as a generic verb, which identifies a class of certain products or services. Other examples of famous “genericized” trademarks include zipper, aspirin, kerosene, Philips-head screw, yo-yo and thermos.

In recent times, Google is a great example of a company undertaking extensive efforts to prevent their name from becoming genericized.  As a search engine, Google offers online-based searches that you can also find on Yahoo or Bing.  However, because of Google’s dominating presence in the business of search engines the public has started using the term Google to identify all search engines, not just Google’s search engine. Although from a marketing standpoint such substantial use of the name is good news for Google, Google also does not want the term to become a generic trademark, as this would allow anyone to commercially exploit it. To see more of a discussion regarding use of Google as a verb, see Wikipedia’s discussion.

Also, check out an example of CHANEL taking action to prevent their mark from becoming genericized.

For more information about generic trademarks or registering your trademark, please visit our website at www.onlinetrademarkattorneys.com.

Published April 24, 2013 by Alex Spurr.

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What is a Breastaurant Anyway?

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Yes, you read that right…a Breastaurant. So what is it exactly? Well, according to Wikipedia, a “breastaurant” is a “restaurant that has sexual undertones, most commonly in the form of large-breasted, skimpily dressed waitresses and barmaids.”  In other words Hooters is a breastaurant, right? Wrong. Hooters was a breastaurant. Just like Twin Peaks and the Tilted Kilt were breastaurants. That’s because the term “breastaurant” is officially a trademarked name and there can only be one “breastaurant” now—Bikinis Sports Bar & Grill.

Never heard of them? Well, they’re a Texas-based chain similar to Hooters where the main attraction is not necessarily the game on that night or the beer. And with Hooters making over $1 billion each year, there doesn’t seem to be any sign of this genre of restaurant slowing down. But if Hooters is upset about the loss of this coined term, they don’t intend to show it issuing a statement to ABC News “The restaurant model that others have dubbed ‘breastaurants’ is a moniker too shallow to define Hooters.”

So now the question becomes what will we call these other restaurants where the main attraction are the scantily clad waitresses? Hooteraunts?

For more information about trademark registration and the importance of securing your business name with a trademark, please visit our website at www.onlinetrademarkattorneys.com.

Published June 5, 2013 by Alex Spurr.

Do You Need to Hire a Trademark Attorney to File a Trademark Registration?

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So who do you trust? When you take your car to the mechanic to get an oil change they come back with a list of four other “issues”. If you ask a restaurant who serves the best steak around they say, “us”. That is why, these days, we rely on Google Local, Yahoo Local, Yelp, Zagat, and most importantly statistics. The Wall Street Journal reported this week, “trademark applicants represented by attorneys are 50% more likely to earn a stamp of approval from the U.S. patent office than those who go at it alone”. We provide similar information on our website. However, if you like statistics, check out the Wall Street Journal article as well as the Thomson Reuters News article both published this week.

Or if you’re looking for trademark attorney assistance visit our website: Online Trademark Attorneys Website.

Published April 11, 2013 by Brent Sausser.

Kate Middleton Knows the Value of a Trademark Registration

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Kate Middleton recently trademarked her name in the U.K for the Royal Foundation Charity. According to the article, she is registering her royal title in relation to a number of goods and services, including t-shirts, in territories around the world. In the original article by The Telegraph Kate explains, “this also protects the foundation against other people using its name illegally.” My thoughts exactly, Kate.

After researching the details through the United Kingdom Intellectual Property Office (UKIPO) database, the trademark name filed is “THE ROYAL FOUNDATION OF THE DUKE AND DUCHESS OF CAMBRIDGE AND PRINCE HARRY” and it covers four international classes of goods or services. Specifically, it includes Class 25 for clothing, footwear, headgear; Class 36 for charitable fund raising; management of charitable funds; financial grant making; Class 41 for educational activities; cultural activities; organising of events (and yes, that’s how they spell organizing in the UK); publishing, including electronic publishing; and lastly Class 45 for Licensing of intellectual property. The Duchess also filed a US registration covering the same goods and services. These and other trademark registrations provide a barrier to potential infringers.

The US and UKIPO databases already show attempts to cash in on Kate’s name. The UKIPO database reveals that an applicant attempted to register, “The Duchess of Cambridge” for “a cheese which we will sell and distribute to the UK and international markets”. It did not receive a registration. The US database reflects two attempts. The first one is for a trademark filed in 2011, “KATE’S KLOSET ‘FOR THE FRUGAL PRINCESS'”. This trademark was rejected on a 2(d) basis for likelihood of confusion with the “FRUGAL PRINCESS”. In fact, the Examiner didn’t even mention Princess Kate. The second is for the not so inconspicuous mark, “PRINCESS KATE”. To which the Examiner replied, nice try, and rejected the application for a false connection with a living individual.

If you own a business and haven’t filed a trademark, you should follow in Kate Middleton’s footsteps. Protect your business from other people using your name. For more information regarding trademarks or help filing a trademark see our website: Trademark Lawyers Website.

Published April 3, 2013 by Brent Sausser.