Monday, August 07, 2006

Colgate Sailing School - Not

Let me say this right up front: I know nothing about trademark law, other than what I glean from tuning one ear into my son's conversations about law school.

But apparently if your name is Steve Colgate and your business is running a Sailing School you are not allowed to have as a trademark Colgate Sailing School.

The explanation is at TTAB Sinks "COLGATE SAILING SCHOOL," Affirms Section 2(e)(4) Surname Refusal.

I've read it three times and still don't understand it. I guess that's why I am not a lawyer.

21 comments:

Litoralis said...
This comment has been removed by a blog administrator.
Sherry said...

See, I was thinking this was about toothpaste and then I realised I was totally wrong. Oh well.

Sherry said...

Hey, where did Litoralis' comment go? If it hadn't been for the comment I'd still be thinking it was about toothpaste.

Litoralis said...

OK...I'll bite. Here's my basic explanation:

You can't get a trademark on a surname...that would be unfair to the other people with that surname who might want to use it for their own use and could be confusing to the public. There are five factors that are weighed to determine if the word is a surname (all of which are used by the court to determine whether or not a word will be perceived as a surname by the public): how rare it is, whether anyone connected with the applicant has the surname, whether the word has any other recognized meaning other than as a surname, whether the word has the structure and pronunciation of a surname, and whether the surname is presented in highly stylized form.

You also can't get a trademark on a descriptive term for the type of product or service you are selling...that would be unfair to everyone else who sold that product and could confuse the public. Essentially the other words in the mark must be able to function as a trademark in their own right.

The combination of a generic term and a surname does not make the combination a valid trademark.

So, you can combine a surname with words that would function as a trademark, or you can combine an unusual surname with generic descriptor: "Smith Scribblers" or "Xappler Pencils" would probably be OK, but not "Smith Pencils". Or to make it more relevant to this case: "Tillerman Sailing School" or "Colgate Sailomatic" would be OK.

Now, just in case there are other legal types reading this blog...why do you think that the argument was not raised that the word "Colgate" has gained secondary meaning in relation to sailing as the name of a sailboat and should therefore be allowed to function as a trademark? I think this could have been a winning argument in this case (think about Hyatt Hotels, Ford Motor Company, etc.)

Litoralis said...

I had to edit my post...there were some important omissions in the first version.

Tillerman said...

But Colgate is a trademark when used by the Colgate-Palmolive company for toothpaste etc. And it was the surname of one of the original founders of the company. How come?

EVK4 said...

somewhat unrelated there is also a school known as Colgate. Quite a good little college in NY. they've probably never trademarked anything though.

Litoralis said...

The short answer is that the name "Colgate" has obtained secondary meaning because of its association with oral care products and is therefore a valid trademark.

If a new company were to be formed using a surname as the name of the company and the name of a product they would not be granted a trademark until they could show that the name they were using had a secondary meaning associated with their product.
This does not mean that they couldn't use the name for their product right away, it just means that they can't ask the government to give them exclusive use of the name until it has attained secondary meaning.

Also note that trademarks are associated with a specific set of products or services...that's why you can have the same trademark associated with different products (as long as the products are sufficiently different so as to prevent confusion). For example, the trademark "Navtec" is associated with underground boring machines and marine hardware. Look trademarks up for yourself here: USPTO

Tillerman said...

Hey folks. This blog has it all. Sailing stories, pictures of a cute baby girl and free legal advice. What more could you want?

Litoralis said...

Colgate University does in fact own a trademark on the word "Colgate" for:
Paper goods and printed matter; namely, stationery, decals, loose leaf binders, notepad holders, writing paper, envelopes, pens, pencils, journals containing scholarly articles on a wide range of topics, student and university telephone directories, booklets, magazines, pamphlets, newsletters and brochures in the field of education,
Clothing; namely, T-shirts, sweatshirts, sweatpants, shorts, sweaters, jackets and headgear; namely, caps.
Educational services; namely, providing instruction at the university level, conducting classes and seminars, and reference and lending library services for others; and entertainment services; namely, presentation of sporting events, lectures, concerts, and dramatic productions

Litoralis said...

Now that Tillerman has represented my posts as legal advice I will post a disclaimer:

The information contained in my posts on this web site is provided as a service to the Internet community, and does not constitute legal advice. I try to provide quality information, but I make no claims, promises or guarantees about the accuracy, completeness, or adequacy of the information contained in or linked to my posts. As legal advice must be tailored to the specific circumstances of each case, and laws are constantly changing, nothing provided herein should be used as a substitute for the advice of competent counsel. I am not a lawyer, patent agent or trademark agent and nothing I say should be interpreted as legal counsel.

AdriftAtSea said...

Then how did Microsoft get a trademark on Windows... which is pretty obvious, and wasn't in fact pioneered by Microsoft, but by Xerox PARC and then Apple.

Tillerman said...

Good point Dan See http://www.internetnews.com/bus-news/article.php/3311641

Litoralis said...

Dan,
Descriptive marks (or more properly, "merely descriptive marks") are devices which merely describe the services or goods on which the mark is used. If a device is merely descriptive, it is not a mark at all, since it does not serve to identify the source of the goods or services. No trademark rights are granted to merely descriptive marks.

However, it is possible for descriptive marks to "become distinctive" by achieving secondary meaning. Secondary meaning indicates that although the mark is on its face descriptive of the goods or services, consumers recognize the mark as having a source indicating function. Once it can be shown that a descriptive term or phrase has achieved this "second meaning" (the first meaning being the generally understood meaning of the term or phrase), a protectable trademark is developed. Secondary meaning can be achieved through long term use, or large amounts of advertising and publicity. The acquisition of secondary meaning is often proven through the use of consumer surveys, that show that consumers recognize the mark as a brand, such as "FORD", as opposed to a descriptive term, such as "reliable". "Windows", "Sharp" and "International Business Machines" are examples of descriptive marks that have acquired secondary meaning.

Also, trademarks are not patents; it doesn't matter that the technology behind the product was developed by someone else (inventorship and non-obviousness are requirements for a patent, not a trademark).

Litoralis said...

Windows is still a valid trademark...Microsoft must actively attack any use of it's trademark that could turn it into a generic term, which would destroy their trademark.
Other trademark owners have similar problems, notably Xerox, Jacuzzi and Kleenex (also Coke in the southern US and more recently Google). Xerox has undertaken a comprehensive policy of educating the general public about the issue of generic use of its brands by placing advertisements in the trade press confronting the issue head on since the early 1970's. Xerox has ads with the text "if you use ‘Xerox’ the way you use ‘zipper’, our trademark could be left wide open. There's a new way to look at it."

Carol Anne said...

As a writer, I often see advertising admonishing writers to use trademarks correctly, and I do my best to do so. The whirlpool tub at Five O'Clock Somewhere is really a Jacuzzi, and so I use the brand name to describe it. However, when I blow my nose, I usually use store-brand tissue, so I will NEVER say I use a Kleenex. When I make a photocopy, it's just a photocopy, since the Xerox company lost the equipment-lease contract where I work a year ago.

Companies that own brand names are hugely interested in protecting them. Linoleum, aspirin, and many other terms used to be brand names but turned into common nouns because they fell into common usage. Jacuzzi, Kleenex and Xerox want to protect their brand names, in order to preserve the image of quality that comes with those brand names. Even if I'm content to blow my nose on a lesser quality tissue, the Kleenex company wants to keep its name associated with the best.

Tillerman said...

Aspirin® still is a registered trademark of Bayer AG in Germany and more than 80 other countries including Canada.

Zen said...

That was a real educational sail

Tillerman said...

Sure was Zen. More comments on this post than on any of my recent sailing postings. Maybe I should start a new blog called, "I know nothing about law but..." where I would write about the apparent oddities of legal decisions and then all the lawyers in the world can comment and explain it to me - with disclaimers of course.

Tim said...

I think I'll stick to the racing rules, they seem a little more straight foward.

Pat said...

Yeah, now rule 18 is seeming almost relatively like a piece of cake, especially sinced I snagged a copy of the Dellenbaugh newsletter explaining it.

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