# Can you trademark a descriptive phrase?



## hi-nrg-joe (Jul 19, 2008)

We sell a certain brand of rhinestone decal material and list it under the subcatagory of our store front called "rhinestone decal material". A company out there is telling us that we can't use the phrase "rhinestone decal material" because they have it trademarked and will sue us unless we take it down. I talked to a patent attorney, as did my partner, and the advice they gave us was to ask the other company for their serial/application or registration number. We politely replied saying we respect IP rights and will gladly remove any offending verbage if they can supply the serial or registration information. They said they didn't have to and will pursue legal actions against us. Both my partner and I, plus both attoneys looked up the name "rhinestone decal material" and there is no trace of it being trademarked or in the process.

If they are in the process or have it trademarked, wouldn't they be open to show that they do? I feel that they should prove it to us, otherwise it feels as if they are just being bullies and trying to scare us and others from using a generic phrase.

Can I trademark "rhinestone template material" and then go out and sue everyone who ever used that phrase? It seems that "rhinestone template material", "rhinestone decal material", and other phrases like that are simply descriptive ways to describe what something is. In our case we use both of those phrases as sub-categories and then list the Trademarked brand within those categories.

Their claim is that the material they sell is actually called "rhinestone decal material". Does this mean you refer to it as "rhinestone decal material" material? This seams as shady as trying to make a new soft drink called "ice cold soda" and going after every company advertising ice cold soda.


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## binki (Jul 16, 2006)

They may have a common law trademark which in the USA is only good in their state. If you register the name then you can take it over everywhere but cannot preclude them from using it. 

Yes, you can TM a phrase, it is called a word mark.


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## hi-nrg-joe (Jul 19, 2008)

Thanks for the info. I just hate feeling bullied. If they would simply send some information showing that they have have taken the steps to apply or have a trademark, then it would be easy to correct the problem. Just because someone claims ownership of something doesn't actually me they have anything to back it up. Then when they threaten to sue me, of course it put me into a defensive mode. He also mentioned something about owning a URL and that makes him legally the owner of anything related to that name. I think he's also threatening to have my website taken down.


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## neilb (Jan 14, 2012)

He may or may not own the trademark but to say having a URL automatically gives you rights to anything related to that name is bull.


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## VTG (Dec 16, 2010)

Joe, i'm not a lawyer, so please don't mistake this for legal advice ... but I don't think you need to remove the phrase from your store front until you receive an official Cease & Desist notice from the folks who claim they own the trademark for the phrase.

If they do have the rights to the phrase, a Cease & Desist is normally the first step their lawyers would take. If you don't comply, THEN they might try to sue.

Try to stay professional and polite, but don't fall for their bullying tactics unless they can produce some type of evidence that they own the rights to it (serial/application or registration number).

Good luck.


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## hi-nrg-joe (Jul 19, 2008)

What I have received was an email from the owner of the company, not a lawyer, saying that I'm infringing on his trademark “rhinestone decal material” and that I need to remove it from all my marketing material, which I have none, and my website. They my partner has received several calls and other emails from the owner, once again, not a lawyer, telling us he we sue us unless we comply.

When we asked for the trademark information, this was part of the response:
"We have chosen not to disclose the patent application, application number, or patent claims to you or your client."

And now, from what I'm hearing in and around the industry is that he's emailing and telling others that he's going to agreesively go after us. I'm shocked that he's taking it this far.


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## binki (Jul 16, 2006)

I looked that phrase up in the united states trademark office and couldn't find it. Ask them for their registration number but before you do, maybe you should start the registration process?


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## hi-nrg-joe (Jul 19, 2008)

I looked it up also, and so did the attorneys and they found nothing at all. I guess we'll just see how this plays out.


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## ericsson2416 (Aug 29, 2007)

Is this guy in the same state? A local competitor? Sure doesn't sound right. I would go with Binki's advice and start the registration process. That way if he's B.S.ing you can send him a cease and desist once approved.


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## sunnydayz (Jun 22, 2007)

Well when I google Rhinestone decal material, and include patent pending I dont find anyone or any site that states that it is pending. Plus I found literally hundreds if not thousands of sites using that same term.


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## kimura-mma (Jul 26, 2008)

ericsson2416 said:


> I would go with Binki's advice and start the registration process. That way if he's B.S.ing you can send him a cease and desist once approved.


Unfortunately, it doesn't really work that way. Trademark ownership will ultimately be based on first use in commerce, not first to file an application with the trademark office.

It sounds like this guy is overcompensating for his lack of proof with an aggressive legal threat. Either he cannot get the mark registered (based on it being descriptive or generic, and not distinctive) or he's in a long process to get it registered (but I doubt this because there is no evidence of even an application at this point).

At best, he has common law trademark rights. But it doesn't seem like he's even offering proof of that in his legal communication so far.


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## hi-nrg-joe (Jul 19, 2008)

kimura-mma said:


> But it doesn't seem like he's even offering proof of that in his legal communication so far.


That's one of my points. If I was in the process of trademarking something I created/owned, I'll gladly offer up any registration info to a competitor to show them how serious I was. I'm thinking that he either can't get it or just wants to claim that he has it.

@ericsson2416
He's in a different state then me.

@sunnydayz
I've done the same thing and searched the web for those terms and most people selling rhinestone decals also offer the blank material as rhinestone decal material.


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## kimura-mma (Jul 26, 2008)

hi-nrg-joe said:


> That's one of my points. If I was in the process of trademarking something I created/owned, I'll gladly offer up any registration info to a competitor to show them how serious I was. I'm thinking that he either can't get it or just wants to claim that he has it.


The only thing I can think of is that he plans on applying for the supplemental register. He can then start the process of attempting to prove his mark is distinctive, not descriptive. He can then apply for the primary register a few years down the line. Part of his proof may be the actions he takes to protect the mark.

I don't know if this is the case or if he can even accomplish it with this particular mark. But I know people who have had to go through the supplemental register. Some succeeded, some didn't.

It's odd that there is no application yet. But it's also odd that he's taking this type of legal stance without offering any proof of ownership. I'm definitely interested to see how it plays out.


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## kblack (Feb 2, 2011)

I am having a similar issue. It sounds like a lot of people have researched the TM laws and know more than me..
I want to use a certain phrase on tee shirts and I looked it up on the trademark site. In fact I have used it before and thought about having it TM. I did find it on the TM site and it has a lot of old information on it and it said.. DEAD (Circa: 2005)* and also *Notice of Abandonment. 
I was thinking of applying for a trade mark on it. 
Open for any advise on applying for an old trademark!!
http://tdr.uspto.gov/search.action?sn=76638191#


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## kimura-mma (Jul 26, 2008)

kblack said:


> I want to use a certain phrase on tee shirts and I looked it up on the trademark site. In fact I have used it before and thought about having it TM. I did find it on the TM site and it has a lot of old information on it and it said.. DEAD (Circa: 2005)* and also *Notice of Abandonment.
> I was thinking of applying for a trade mark on it.
> Open for any advise on applying for an old trademark!!


The first thing is, are you using the mark as a brand name or logo? Or are you just using it as a t-shirt design? A brand name or logo would be eligible for trademark. But a t-shirt design would not.

If the existing mark is dead, then it shouldn't be a problem to apply for a new trademark registration. The only thing to keep in mind is an obscure law called Misappropriation of Goodwill. Basically, you cannot profit off an association with the previous trademark or company.

As is the case with any trademark, do some searching to see if there is anyone else using the mark in commerce. Just because there isn't an existing trademark registration doesn't mean someone isn't using it and have some rights to it.


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## binki (Jul 16, 2006)

I would still start the process with the US Trademark Office. If he has done business with this name in his local area he can keep doing so but common law TM's are not enforceable outside of his area of commerce. TM's are only enforceable if they are in use in the State (Country outside of the US) they are used in commerce. I would go for it and file. A few hundred bux is a small price to pay to protect your interest. Once you have a US Registered TM or it is denied because there are too many others out there you can send him a bag of sand and tell him to go pound it.


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## sunnydayz (Jun 22, 2007)

kimura-mma said:


> The only thing I can think of is that he plans on applying for the supplemental register. He can then start the process of attempting to prove his mark is distinctive, not descriptive. He can then apply for the primary register a few years down the line. Part of his proof may be the actions he takes to protect the mark.
> 
> I don't know if this is the case or if he can even accomplish it with this particular mark. But I know people who have had to go through the supplemental register. Some succeeded, some didn't.
> 
> It's odd that there is no application yet. But it's also odd that he's taking this type of legal stance without offering any proof of ownership. I'm definitely interested to see how it plays out.


I have a question and I wanted to ask you, because I know you are really great with this 

when one DOES have a registration either pending or otherwise, dont they have to also prove that it not in common use? Like once on my website, I got a cease and desist from Gerber for using the term onesie in describing my garments that I was selling. They sent me the cease and desist, and I complied and removed the language from my website and that was the end of it.

Is it not the owner of the trademark to enforce from the beginning? And if they dont and it becomes common use, like when I googled the above terms I found thousands of sites using those terms, would one not be able to in court prove that its a common term, therefore making it non protected language?


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## sunnydayz (Jun 22, 2007)

If I recall correctly from reading on the trademark website a while back, whether its a trademark, copyright or patent, its the owners responsibility to protect it so it does not become common, that if it becomes common use they will lose the ownership if they do not protect it.


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## kimura-mma (Jul 26, 2008)

binki said:


> If he has done business with this name in his local area he can keep doing so but common law TM's are not enforceable outside of his area of commerce. TM's are only enforceable if they are in use in the State (Country outside of the US) they are used in commerce.


Common law trademark rights are enforceable in any state he has shipped product to, not just the local state he is in.



binki said:


> I would go for it and file.


I would do more research before making this decision.

If it's a small time company making these claims, that's one thing. But if it's a bigger company, they may have extensive common law rights.

It hasn't been mentioned in this thread, but I've heard of this issue before and I believe the company making the claims is fairly well known.



binki said:


> Once you have a US Registered TM or it is denied because there are too many others out there you can send him a bag of sand and tell him to go pound it.


Even if you have a registered trademark, someone else can come along and prove prior usage in commerce and gain full trademark rights. Similar to what the World Wide Fund did to the World Wrestling Federation.


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## binki (Jul 16, 2006)

Nothing ventured, nothing gained. If the OP wants to protect his wording then if it were me, I would file.


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## kimura-mma (Jul 26, 2008)

sunnydayz said:


> when one DOES have a registration either pending or otherwise, dont they have to also prove that it not in common use?


No, a trademark application does not require the applicant to prove that a mark is not in common use. It would be up to the USPTO examining attorney to determine of the mark is too generic, too similar to an existing mark or fails to meet any other requirement.



sunnydayz said:


> Like once on my website, I got a cease and desist from Gerber for using the term onesie in describing my garments that I was selling. They sent me the cease and desist, and I complied and removed the language from my website and that was the end of it.
> 
> Is it not the owner of the trademark to enforce from the beginning? And if they dont and it becomes common use, like when I googled the above terms I found thousands of sites using those terms, would one not be able to in court prove that its a common term, therefore making it non protected language?


Yes, it's the responsibility of the trademark owner to enforce their rights or they are at risk to lose some level of protection. But it takes a lot for that happen.

In regards to common use and distinctive marks, it really depends on the situation.

Gerber has owned the ONESIES trademark long before it became a common term. And I think it's fair to say that the common use is not due to Gerber's neglect of the mark. The children's wear industry has grown so much and the word onesie has become the common term for a one-piece garment. It's impossible for Gerber to prevent all usage because it's so widely used. And although the trademark has certainly diminished over the years, Gerber still owns a good level of protection on the mark, so they can still pick and choose to target those that infringe.

Rhinestone Decal Material is different because it may be determined as a common term PRIOR to an approved trademark registration. So in this case, the USPTO may reject it from ever being registered. The only way for someone to get it registered it to prove that the mark identifies ONE source of goods or services. So that's probably the motivation in this case. The guy is trying to eliminate all other uses of the term so he can try to prove the term is synonymous with his product. That's probably unlikely to happen, but he seems hell bent on trying.



sunnydayz said:


> If I recall correctly from reading on the trademark website a while back, whether its a trademark, copyright or patent, its the owners responsibility to protect it so it does not become common, that if it becomes common use they will lose the ownership if they do not protect it.


It depends on how and why it has become common. For instance, "Aspirin" is no longer protected as a trademark but "Band-Aid" is.


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## kblack (Feb 2, 2011)

Tim thanks for the advice, I did some more checking and found that it was trademarked a second time by an other person. It is a scary to think I could of used something not knowing it was trademarked. I did find information to request use, but I don't know how that works or if it would be worth asking for a license to use.
The phrase was: R.V.THERE YET? (with a picture) We grew up camping and trailing and that was our famous question as kids?? I have a brother with an RV repair business and he wanted me to do Tee shirts, jackets and other items. The new owner of the trade mark is also in the RV sales.


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## hi-nrg-joe (Jul 19, 2008)

kimura-mma said:


> It hasn't been mentioned in this thread, but I've heard of this issue before and I believe the company making the claims is fairly well known.


They are fairly well known and have heard that they went after a few others. I don't know who the others are, but I'd love to talk to them and find out the outcome. I have a feeling, they were threatened and eventually backed down. I'm going to do my best not to be pushed around in this case.


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## binki (Jul 16, 2006)

I am with you there, don't pick fights but if someone picks one with you, finish it. Nothing personal, just buisness. Since you are in the PRC you may have some extra protections. You can register for a service mark in the PRC as well.


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## binki (Jul 16, 2006)

I did a search on this phrase and holy cow, 
https://www.google.com/#q=rhineston....,cf.osb&fp=558e40f8d7102ce5&biw=1343&bih=669

How could they claim anything on you?

Never give in, never give up and don't go down without a fight. This just makes my blood boil.


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## sunnydayz (Jun 22, 2007)

binki said:


> I did a search on this phrase and holy cow,
> https://www.google.com/#q=rhineston....,cf.osb&fp=558e40f8d7102ce5&biw=1343&bih=669
> 
> How could they claim anything on you?
> ...


That is exactly what I thought, it was way to common of a term to even try to patent. Everyone is using that term for a description of materials.


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## binki (Jul 16, 2006)

yuppers, so the villian can go pound sand.


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