question Patent & Trademark?

[NickB]

I have found a name which a Fortune 500 company has a patent for BUT there is no trademark/copyright associated with the name.

The patent was granted/approved around 5 years ago.

The name can be used to describe a whole industry so is not very niche, but I suppose this could depend on your view on "niche" so I don't know if this has any impact on the decision making process.......

Can I register this name in good faith or would the company have a legal claim against me?

EDIT:

I am happy to share the name in PM with anyone who has a good reputation on here - I am not looking for a grey area to exploit, just could not find a simple answer online (one I could understand anyway!)

 

[jberryhill]

I have found a name which a Fortune 500 company has a patent for BUT there is no trademark/copyright associated with the name.

The probable reason you could not find a simple answer online is that:

(a) there usually aren't simple answers. The questions might be simple, but the answers usually depend on a whole bunch of facts.

and

(b) your question doesn't make any sense. You don't get a "patent" on a name.

Patents are granted for inventions - novel things for doing something useful, methods for making or doing useful things, certain types of asexually-reproduced plants, and ornamental designs for useful objects.

"Copyright" is a bundle of rights to copy or to perform creative works, such as works of authorship, visual and multimedia arts, songs, choreography, dramatic works, etc.. Copyright does not apply to names or short phrases.

Trademarks or service marks, are words or symbols which distinguish the goods or services originating with one source from the goods or services of other sources in the relevant marketplace for those goods or services.

They are three different things.

 

[NickB]

The probable reason you could not find a simple answer online is that:

(a) there usually aren't simple answers. The questions might be simple, but the answers usually depend on a whole bunch of facts.

and

(b) your question doesn't make any sense. You don't get a "patent" on a name.

Patents are granted for inventions - novel things for doing something useful, methods for making or doing useful things, certain types of asexually-reproduced plants, and ornamental designs for useful objects.

"Copyright" is a bundle of rights to copy or to perform creative works, such as works of authorship, visual and multimedia arts, songs, choreography, dramatic works, etc.. Copyright does not apply to names or short phrases.

Trademarks or service marks, are words or symbols which distinguish the goods or services originating with one source from the goods or services of other sources in the relevant marketplace for those goods or services.

They are three different things.

Thanks for your reply John - I appreciate it.

I have re read my original post and it is not very clear, so I hope the below is a little clearer. If not then this means my ADHD is still kicking in hard........

A company has a patent on a potentially new manufacturing technique - they have called it xyz

I will assume (which I know is dangerous) that Trademark and copyright law do not apply as the technology has yet to be developed

Can I register xyz in good faith, even though the company has a patent for this manufacturing technique?

Or do I need to consult with a solicitor and share the full details?

I am not sure if the above is any clearer, but it is as clear as I know how......

 

[NameLlama]

5 years ago
Wouldn't theyve registered it by now
Did it drop
Some fameous domainers own domains containing Big trademarks for years now, and nothing happens, so .

 

[Hootsifer]

Yes but they also have big capital to fight C&D UDRP complaints.

 

[cooljub]

The name can be used to describe a whole industry

A company has a patent on a potentially new manufacturing technique - they have called it xyz

Was xyz existing as an industry before their manufacturing technique?

 

[jberryhill]

A company has a patent on a potentially new manufacturing technique - they have called it xyz

I will assume (which I know is dangerous) that Trademark and copyright law do not apply as the technology has yet to be developed

That's still pretty much undecipherable. Either they invented a technology and patented it, or the technology has yet to be developed. Maybe more development is needed to commercially scale it or something, but I just don't get the fixation about a patent. A patent isn't going to have anything to do with whether the domain name conflicts with a trademark, unless you are trying to say that the patent refers to it generically as xyz.

Forget about the patent.

Does the company sell goods or perform a service which uses "xyz" as a distinctive identifier to the effect that they are the only ones who do xyz, in order to distinguish their goods or services from other people that do things similar to xyz?

But even that's probably not a good question. If there is only one company making, say, artificial hearts for skunks then, sure, the phrase "artificial hearts for skunks" identifies only one manufacturer, but it doesn't make it a trademark. It's still a descriptive phrase, even if they are the only ones doing it.

So I guess a better question is "Would I know what the xyz technique is, if I knew what xyz was?" - i.e. is whatever they are calling it directly descriptive of whatever the technique might be?

 

[NickB]

Was xyz existing as an industry before their manufacturing technique?

Short answer is yes

 

[jberryhill]

And it was/is called xyz?

 

[NickB]

And it was/is called xyz?

It is called Digital Assembler: https://patents.google.com/patent/US7848838B2/en

 

[jberryhill]

Long story short, the way those words are used in the patent pretty much TELLS you that the patentee considers the term to be generic.

https://www.uspto.gov/web/offices/pac/mpep/s608.html#d0e47416

^^^^^ - that is the USPTO rule for patents which explains that you can't use a trademark to describe a product in a patent application, absent identifying it as a trademark and including a further generic description of what it is that the trademark stands for.

Aside from which a Google search for the phrase "digital assembler" adequately demonstrates the phrase to be used in various generic contexts with no particular distinctive use as a mark by anyone.

I remain mystified why a Google search is not the starting point for any questions about "is so-and-so a trademark or not".

Simply conducting a Google search is the quickest way to get an initial indication of whether a word or phrase is distinctively associated with goods or services of a particular source. Is it the final word? No. But it does answer 99% of the questions here.

 

[NickB]

Long story short, the way those words are used in the patent pretty much TELLS you that the patentee considers the term to be generic.

https://www.uspto.gov/web/offices/pac/mpep/s608.html#d0e47416

^^^^^ - that is the USPTO rule for patents which explains that you can't use a trademark to describe a product in a patent application, absent identifying it as a trademark and including a further generic description of what it is that the trademark stands for.

Aside from which a Google search for the phrase "digital assembler" adequately demonstrates the phrase to be used in various generic contexts with no particular distinctive use as a mark by anyone.

I remain mystified why a Google search is not the starting point for any questions about "is so-and-so a trademark or not".

Simply conducting a Google search is the quickest way to get an initial indication of whether a word or phrase is distinctively associated with goods or services of a particular source. Is it the final word? No. But it does answer 99% of the questions here.

Thanks - appreciate the time you have spent on this.