Originally posted 2014-10-06 09:52:13. Republished by Blog Post Promoter

“Trademark” is not a verb.

Right — we will resolve these all here and now.  Key issues.  Fish or cut bait.  Or we most assuredly will all hang separately!

The Daily Mail reports, ” Cheeky team applies to use ‘Obama’ as a European trademark“:

A group of enterprising Spaniards is set to win the European trademark rights to a word with instant global recognition – OBAMA.

EU trademark rules once stopped opportunists turning the names of heads of state and other prominent figures and celebrities into branding gold.

But now, unless the use of an instantly identifiable name is deemed to be an act of deception, little else prevents the first-comer grabbing the rights.

Trademark is Not a Verb, Mr. Hart
Trademark is Not a Verb, Mr. Hart

This item stands for two key points which we all must know; nay, knit unto our very hearts.  Permit me some down-the-middle pedantry here.

1.  Trademark is NOT a verb.  Why do I refuse to give up my hopelessly-outnumbered position against the use of the word “trademark” as a verb?  This usage is everywhere, even on the INTA discussion list.  The reason is not only because I am a reactionary.  (Not only.)  It is because the whole point of U.S. trademark doctrine — that trademark rights are, and by the grace of God and Senator Lanham ought to be, earned by use.  First comes secondary meaning, then comes “rights.”

As I have said before, just as you cannot be “bar mitzvahed,” you cannot “trademark” something.  The “Trademarking” is not “done” via the filing of some paper or granting of a registration.  And this fact is obscured by the awful neologism “trademarked,” which suggests you can … well, it suggests you can do exactly what we’re reading this “cheeky team” did in the Daily Mail piece, and which a decent respect to the opinions of mankind requires that we all acknowledge they should not be able to ought to be do.  Ing.

Trademark is Not a Verb
Trademark is Not a Verb, or Give me Death!

2.  Speaking of self-evident truths, we solemnly publish and declare that even it had not become necessary for one people — Amur’ca — to dissolve the political bands which had connected it to another — England, of course — the injury imposed on the American language by the latter by the jarring, ugly and sick-making term “cheeky” as in the Daily Mail headline would make it necessary now.

And if I have to live with “trademarked” to never again see “cheeky,” may the Supreme Judge of the world, in recognition of the rectitude of my intentions, so grant me.

Thus endeth the lesson. Trademark is not a verb.

As to “European trademark” — “sheesh!

By Ron Coleman

I write this blog.

12 thoughts on “Turn the other one? Or liberty? Or death?”
  1. Ron:

    You do realize that European trademark law differs from U.S. law on precisely the point you make? There, registration, not use, is what vests the owner with rights. That’s what permits these shenanigans to occur more easily there than here.
    (It also leads to many headaches and possible falling into the trap of “fraud” on the Trademark Office when you try to cross-register European registrations here.)

    1. I sure do. As you know we have represented some of the same European trademark owners! 😉

      That’s why we needed a Revolution, Tal — precisely to sever the bonds between Amur’ca and the decadence of the Old World, still preserved today in so many ways not least including their trademark law!

  2. Ron, count me as a brother in arms fighting the valiant fight to keep “trademark” a noun.

    Many hours I’ve spent in linguistic choreography to present a point of trademark law and still maintain “trademark” in syntax purity — efforts, I humbly suggest, that are far beyond the skill of amateurs and, perhaps, mere mortals, but which are, alas, the dues we owe to maintain fidelity with [U.S.] law and our calling.

  3. […] Irrespective of the specific settlement terms, ending this case is a strategic win for Google because it takes out the last “major” US trademark owner challenger to AdWords.  Combined with the recent dismissal of the Jurin lawsuit, Google is now down to two pending US trademark lawsuits over AdWords: CYBERsitter and Home Decor Center.  Despite CYBERsitter’s recent intermediate “win,” I don’t think either of the two remaining lawsuits are dangerous to Google.  As a result, Google is tantalizingly close to successfully running the table on all of the US trademark challenges to its AdWords practices.  When this happens, Google will have legitimized the billions of dollars of revenues it makes by selling trademarked [sic] keywords in AdWords. […]

  4. So what if someone wrote a song about the Eiffel Tower, called "Eiffel Tower," and people really liked the song–it became a "catchy tune," in a manner of speaking. Could the owner of copyright in the song then lawfully use the popularity of the song to exercise dominion ("exclusivity") over the name "Eiffel Tower," such as to stop others from selling T-shirts or hats, etc. that bear the name "Eiffel Tower"?

    We have this fact pattern in a case before a district court, part of which is now on appeal to the regional Court of Appeal.

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