Toby Bartels wrote:
probably try all kinds of things to make you stop, but I'm
much more skeptical about whether they could win a lawsuit. Trademark
protection is normally denied for terms that are merely descriptive of
the goods or services involved. I'm not a trademark examiner, but my
conclusion would be that "light, crisp, and refreshing" are simply
descriptive terms, so they can't be a trademark.
"light", "crisp", and "refreshing" are simply
but "light, crsip, refreshing" is a distinctive phrase used by Pepsi.
So that latter may be a trademark even if the former is not.
Well, if Pepsi had invented a term like "crsip", I'd certainly be
to considering that a trademark. And I'm aware of the argument that you
can combine otherwise purely descriptive terms into a trademark.
Personally, I don't buy it in this situation. Besides, I suspect Pepsi
might also try to discourage anyone marketing a soft drink as "crisp and
refreshing", or "refreshing, crisp, and light".
Still, since NOUIAL (neither of us is a lawyer), we
won't get very far
arguing about whether this particular phrase will work or not.
I only said I wasn't a trademark examiner. But yes, the argument can't
produce a definitive ruling on the question, because neither of us is a
plenty of money, and could certainly file a trademark
application for "light, crisp, and refreshing." So why isn't it
registered, when "Diet Pepsi" is? Probably because Pepsi hasn't filed an
application, and doesn't want to, since their lawyers realize there's a
good chance the Patent and Trademark Office will refuse to register it.
Another possibility: Their lawyers don't see a reason to do so.
You seem to be implicitly assuming that an unregistred trademark
doesn't do Pepsi any good.
I agree that I've made an implicit assumption, but your identification
of it is wrong. My assumption is that a registered trademark would
benefit Pepsi more than an unregistered trademark. We may not
necessarily agree about how much benefit registration brings, but I hope
you're not trying to argue that registration doesn't do *any* good. My
point is that if you file an application and get rejected, that's a
pretty good argument that you don't actually have a trademark. So the
analysis I'm attributing to Pepsi's lawyers is this - that the marginal
benefit of registration is outweighed by the risk of having registration
I am not trying to argue that an unregistered trademark is worthless. I
apologize for any misunderstanding I may have caused in that regard. And
in pushing the idea of registering our trademarks, I do not mean to
suggest that we shouldn't also take other available steps to protect them.
Finally, Toby Bartels also wrote:
With both names and jurisdictions, our determination of
what is critical
should be based on the specific legal needs that present themselves to us.
For example, if PhatNav refuses to respect our trademark without legal action,
then we'll need to register the terms that PhatNav is infriniging upon
in whatever jurisdiction will have the greatest effect upon PhatNav.
And if PhatNav is the first immediate problem, then that would determine
what and where we register first.
A trademark application takes considerable time to process (up to a year
and sometimes longer in the US, I don't know about Europe). And of
course, lawsuits can take a long time too, if it comes to that. So while
the facts on the ground are important, I think an important reason to
register trademarks is to anticipate what people may do in the future.
We shouldn't just wait for problems to come to us.