Can common words be trademarked?

**Gray** · 08-05-2005, 08:29 PM

I wanted to trademark another word or "easy training", separated and not stuck together. They said they are generic words and could not be trademarked per se

So why did they allow "believe it or not" in 1925, and not "easy training"?
Because Ripley was long established, or is training a noun?

**ClaireB** · 08-07-2005, 11:31 AM

JBerryHill

Are you with Giga?

Claire

Originally Posted by jberryhill

Ah... I see the switcheroo here:

and..

The confusion apparently arises from an apples and oranges comparison of the title used on what was probably some academic web page, and the domain name which she registered for purposes which remain unclear.

Of course, I don't know what checking the whois on believeitornot.com would have suggested. After all, if anyone had checked it a few years ago, they would only have noticed that it was registered to someone else entirely than it is now... and neither of those folks is Ripley.

Whereupon Dan Norder checks archive.org, looks at the earliest entry, and chuckles...

I will say this, though... the cool thing about letters from inside counsel at Ripley is that they have great stationery.

Had I gone to check the whois and seen ripley's then I would have remembered their TV program and probably would have stayed away from the name because I have many things on my plate and never intentionally look for problematic situations.

Claire

**jberryhill** · 08-07-2005, 12:05 PM

Are you with Giga?

Uh, my wife's name is Mari Jo. If I were with Giga, whomever she might be, then I am sure MJ would not be happy.

So why did they allow "believe it or not" in 1925, and not "easy training"?

I see nothing in the USPTO database that indicates either the filing or refusal of any application for "easy training".

"Easy training" would be a fine and registrable mark for a brand of dishwasher detergent. If registration were sought in connection with some sort of training or educational services, then the application would likely be refused on grounds of both descriptiveness and laudatory subject matter - i.e. "easy training" is descriptive of training services, and the assertion that the training is "easy" suggests some quality of the services that the Office is in no position to judge.

"Believe it or not" is not descriptive of a comic book, a television program, or any of the other goods and services for which Ripley's has sought, and obtained, federal registration and the presumptive validity thereof.

**ClaireB** · 08-07-2005, 12:19 PM

Well, I would appreciate your responses and opinions here:

I found the page with the trademarked Believe It Or Not, which raises a few questions and points, applicable to all other such cases:

http://tess2.uspto.gov/bin/gate.exe?...te=o3lgp7.4.13

1) I remembered that recently I had read that the trademark for Fosamax (anti-acid) was expiring, meaning that trademarks are time-limited and have to be renewed. I see that Ripley's have renewed their trademark regularly, the last renewal being 2004, as can be seen at the above URL

2) In the description of the Services for this trademark they speak about tv production and "entertainment exhibitions in the nature of unusual objects, events and facts, human achievements and human characteristics; museum services; operating displays used in connection with the exhibitions and the museum." (At first, it applied to clothing and T-shirts). So, does the trademark apply only to the sort of business they describe? And how can one find out if the expression is trademarked nationally and internationally? Another question: If someone calls his company with a different type of service "You Better Believe It Or Not" would he be infringing on their trademark? Another question: If they trademarked "Believe It Or Not" does this mean that believeitornot.com is also trademarked? Can they go ahead and trademark for e.g. believeitornot.co.in and all the different countries' extensions? (I do not mean actually buy the names but trademark each of the different country extensions - the exact URL).

3) Yesterday, on TV, there was an ad for a Canadian company called HARVEY'S FURNITURE AND EQUIPMENT. The obvious outstanding name was HARVEY'S, furniture and equipment appearing in smaller non-bold letters. I was surprised because here, in Canada, HARVEY's is very well known as a special fast-food chain. I couldn't see "furniture and equipment" at first, so I made sure to pay attention the next time the ad came. I believe that Harvey's trademarked their name just as Harvey's, but have to find the time to check it. The question is: If this is the case, if Harvey's (the famous fast food chain) registered the trademark Harvey's nationally, then can a Harvey's Furniture be also trademarked with no problem to the owner of this furniture business?

I am curious from a legal point of view. Thank you.

Originally Posted by jberryhill

Uh, my wife's name is Mari Jo. If I were with Giga, whomever she might be, then I am sure MJ would not be happy.

I meant the company GIGA whose URL you gave
http://www.gigalaw.com/library/elect...-10-30-p1.html

At this URL we read this:

" c. Bad-faith intent to profit

" Finally, I must consider whether Mr. Zuccarini acted with a bad-faith intent to profit from EB's marks, and if so, whether he is entitled to the protection of the safe harbor of § 1125(d)(1)(B)(2). In making that determination, I am guided by the following nine factors provided by § 1125(d)(1)(B):"

What is this "safe harbor"?

In the postings above, I said Ripley's and their program were not on my mind at all when I registered this domain. Someone seemed to twist my words (probably unintentionally) as if I was ignorant of the fact that Ripley's Believe It Or Not was theirs. I know the program but never even thought of them because for me "believe it or not", same as the other names I have brainyguys.com and Canadian versions of brainypeople.ca etc. (by the way all the "brainy" urls you find now on the web were registered only after I myself thought of brainyguys.com and registered it, is just an expression of the english language.

Claire

As long as you specialize in trademarks, can you explain this? Is this logical? It happened years ago:

We opened Tel Aviv Hilton (in Tel Aviv of course). Soon after this, someone began producing and packaging cigarettes under the name of Gilton cigarettes to attract people who would think it is Hilton. Hilton sued that manufacturer and, as far as I remember, won.

Would they have won in the U.S.? If Hilton is the hotel chain, can they bar someone from selling Gilton cigarettes? (different spelling!)

**Dave Zan** · 08-07-2005, 05:36 PM