Generic Fair Use

... where pop culture meets intellectual property law

Tag: use in commerce

There is no such thing as a “trademark application”

Trademark law is a nuanced discipline. Word choice matters greatly. The use of a particular word, a certain combination of words, the exact construction of a phrase, and/or the precise arrangement of particular terms – each of these can affect the validity and enforceability of a trademark.[1] It is important.

Last week, I was in the middle of a trademark infringement trial in federal court. Opposing counsel colloquially referred to official certificates of registration as “trademarks” and the underlying applications as “trademark applications.” Each time I had to stand up and object. For one simple, yet legally necessary reason:

There is no such thing as a “trademark application.”

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“Trademark” is not a verb

As a practicing attorney, with a specialization in intellectual property law, I am often asked to assist clients and potential clients with their various trademark needs. Among the more common questions or requests that are posed to me are the following:

“I need to trademark XYZ!”
“My competition is using ABC, but they did not trademark it, so can I use it?”
(and more recently)
“I hear the Supreme Court says you can now trademark offensive terms, is that true?”

While well-intentioned, each of these questions is either grammatically or factually incorrect. Why? Because, quite simply, “trademark” is not a verb and should never be used as a verb in a legal context. “Trademark” is a noun that identifies a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. It is not a process or an action or a series of steps to be accomplished. The word is not a verb. Unfortunately, modern colloquial uses of the term have seeped into the common dialogue. This causes mistakes, unnecessary confusion, and potentially drastic mis-applications of the law by those who are otherwise acting in good faith.

Here’s how and why.

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No, Gene Simmons is not going to get a Trademark Registration for the “Devil Horns” hand gesture. No.

On June 9, 2017, Gene Simmons – the bass player and lead tongue of the classic rock band KISS – filed an application to register a trademark. This by itself is not newsworthy. Gene Simmons has previously sought to register hundreds of words, slogans, and logos he has identified as his personal trademarks. What caught everyone’s attention this time was the subject matter: Gene Simmons asserts that the “devil horns” hand gesture is a trademark that he owns. Yes. A hand gesture. A gesture seen at every single live music event today.

Without belaboring the point, Gene Simmons is not going to acquire a registration for this alleged trademark. This hand gesture is not a trademark. Nor would it belong to Gene Simmons even if it were a trademark.

At the risk of giving too much attention to a frivolous application, here are a few reasons why this application is going to fail.

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