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Groklaw Explains the Cyberlaw "Trademark"

Posted by kdawson on from the black-letter dept.

I Don't Believe in Imaginary Property writes "PJ of Groklaw has written in more detail about the lawyer trying to get a servicemark on the term 'cyberlaw'. (We discussed this here a few days back.) First, she notes that it's only a trademark application at this point. Furthermore, 'cyberlaw' is a generic term with 300,000+ hits on Google and an entry in some dictionaries and reference sites. In other words, while it's silly for a law firm that should know better to file a trademark application, it shouldn't and probably won't be granted if the law is followed. The article is interesting because it spells out the difference between trademarks and servicemarks, as well as explaining the law surrounding them — a law that differs significantly from copyright law."

5 of 37 comments (clear)

  1. Why does the website already show "TM"? by langelgjm · · Score: 2

    For me, the website in question already shows "TM" after the word CyberLaw. It's also the fifth hit on Google. If all they've done is apply for the trademark, are they still allowed to used the "TM" mark?

    --
    "Anyone who [rips a CD] is probably engaging in copyright infringement." - David O. Carson
    1. Re:Why does the website already show "TM"? by MacarooMac · · Score: 2, Informative

      I noticed that too. According to this site an "Intent-to-Use" application is made when the TM is NOT being use yet whilst a "use-based" application is filed when it's already in use.

      --
      "He Who Dares Wins" ...or gets twenty-to-life for totaling their Bimmer on a poodle parade
    2. Re:Why does the website already show "TM"? by artisteeternite · · Score: 4, Informative

      You can use "TM" without filing an application. All "TM" does is give others notice that you are using this as a trademark. "(R)", on the other hand, can only be used after you have been officially registered with the federal government (state registration isn't enough to be able to use "(R)") and you can get in big trouble if they catch you using it without being federally registered.

    3. Re:Why does the website already show "TM"? by __aayurq3262 · · Score: 4, Informative

      If all they've done is apply for the trademark, are they still allowed to used the "TM" mark? Short answer: Yes. All it takes to obtain trademark or service mark rights in a mark is to start using it. Those rights are referred to as "commmon law" rights. Putting a TM (or SM) near the mark is just a way of emphasizing to the rest of the world that you claim the common law rights that the common law automatically gave you. You can even use the TM if you've never filed a trademark application and even if you've been denied registration. Microsoft used the TM next to Windows even though the US Trademark Office ruled that they were not entitled to registration.
  2. Good overview, but note... by cenonce · · Score: 2, Insightful

    PJ as usual gives a good overview of what is going on. What she doesn't really spell out is that the mark needs to be viewed in reference to each one of these services. It is possible that CYBERLAW, when used in connection with some of these services, is descriptive, and not really generic. However, in this case, it may be so highly descriptive with any of these services that no amount of evidence will be sufficient to prove "secondary meaning" (i.e., acquired distinctiveness) - which just means that CYBERLAW for this guy will never become like INTERNATIONAL BUSINESS MACHINES has for IBM. In that sense, the difference between generic and descriptive is pretty moot.

    It always concerns me when I see a laundry list of goods and/or services in an application, especially in this case, when most, if not all, of the services listed generally fall under the USPTO accepted identification of "legal services". That it is often a sign of an inexperienced trademark attorney.