[Foundation-l] Re: Registering Wikimedia trademarks

Thu Apr 29 05:32:12 UTC 2004

Toby Bartels wrote:

> Dan Carlson wrote:
>
>>Toby Bartels wrote:
>>    
>>
>>>Have we tried telling them "Wikipedia is a trademark
>>>of the Wikimedia Foundation" yet?
>>>      
>>>
>>Like so many others, IANAL, but I've seen statements to the following
>>effect: "(term one) is a trademark, and (term two) is a registered
>>trademark, of (company name)."  So there's definitely a difference.
>>    
>>
>For example, according to a bottle on my colleague's desk here,
>"diet PEPSI" is a registered trademark of PepsiCo ("®"),
>while "LIGHT · CRISP · REFRESHING" is merely a trademark ("TM").
>
>But try marketing /your/ soft drink as "light, crisp, and refreshing".
>If you don't respond to their inevitable order to cease and desist,
>then they'll register their original phrase, sue you, and win!
>(OK, so IANAL, but I'll still bet that they'd win.)
>
Pepsi would 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.

"TM" is a symbol anybody can use to claim something is a trademark. No 
registration, or even application to register the trademark, is 
required. So this is a classic example of the difference between 
registered and unregistered marks.

Pepsi has 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.

--Michael Snow
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