Using owned trademarks in association with generics?

[ed1]

Hi there, if anyone could give me any advice on this that would be great. I know lawyers are best, but thought someone might have some experience on the matter..

I'm talking about a situation in which the owner of a certain trademark, uses generics as part of their 'product range'\ online presence.

i.e. trademarked mytrademark.com, buys up some generic .eu's and does not redirect to mytrademark.com, instead uses the sites as one pagers. The generic words are used in association with 'mytrademark', the only time they are alone is in the address bar, i.e. generic.eu.

Would the use of a single generic address be justified? Would new trademarks need to be filed for 'mytrademark + generic'?
I understand that generics give you a certain amount of protection if you are using them literally, but It does get confusing, the idea that 'generics can't be trademarked' seems to have been disproven by so many large corporations over the years.

 

[Dave_Z]

It depends on context.

Apple is generic for the fruit, yet it's distinctive (thus a trademark) for electronics. You can use Apple in any other commercial context as long as it doesn't confuse or conflict with whoever's doing that for whatever. (i.e. selling bicycles, web hosting, etc.)

 

[ed1]

Thanks for explaining that, assessing the distinctiveness of a trademark\ use of a generic makes sense.

 

[dna]

Apple is an example of a very weak trademark because it is generic.
Apple Records and Apple Electronics were originally owned by the Beatles
but they couldn't prevent Apple Computers from using Apple as their trademark also.

 

[Paul]

If two potential trademarks are similar, such that they could be confused by a consumer, then there is a high risk for collision. If the trademarks are particularly generic, industry may be taken into account, but this is not a guarantee, from what I can tell.

My rule of thumb is: if it's on the line, whoever has more money and lawyers is right.

 

[Chris Wright]

Apple is an example of a very weak trademark because it is generic.

Using the word Apple to describe an apple fruit is generic use (not able to be trademarked).
Using the Apple to describe electronics is an arbitrary trademark. (2nd strongest trademark class.)
An arbitrary trademark is usually a common word which is used in a meaningless context.

If the trademarks are particularly generic, industry may be taken into account, but this is not a guarantee, from what I can tell.

Generic use can never be trademarked. But, if non-generic use is in dispute, industry is certainly taken into account.
If you use Dove to denote a bird that is a dove, it cannot be trademarked. If you use Dove to describe something non-bird related, it probably can. Therefore Dove can be a chocolate or a soap, and there is no conflict.

 

[enlytend]

The only way a company can tm something considered "generic" or "descriptive" (in the eyes of the Patent/Trademark Office) is to prove that the term is so strongly associated with their brand that it is NOT generic or descriptive. This can sometimes be done with persistent lawyers and a lot of documentation - sworn statements from peers in the industry, surveys and other data. I've seen it done and have an example of it which I can PM to anyone who's curious.

It's expensive to try that route and there are no guarantees. In the case I know of, their application was rejected at least 2x and it took a couple of years.

They can file for tm's for the word + their brand name, but tm protection for the generic word itself would most likely be for that word in conjunction with their brand name (and there would be a disclaimer to that effect in the tm documentation.) Unless they go through the process I mentioned above, OR unless the word is being used as an arbitrary mark, as explained by DomainBizDev.