[Foundation-l] Re: Registering Wikimedia trademarks

Thu Apr 29 18:03:02 UTC 2004

Michael Snow wrote:

>Toby Bartels wrote:

>>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.

"light", "crisp", and "refreshing" are simply descriptive terms,
but "light, crsip, refreshing" is a distinctive phrase used by Pepsi.
So that latter may be a trademark even if the former is not.
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.

>"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.

Yes, this was intended to be a classic example of that difference.
But note that it's not the "TM" that makes it a trademark;
according to Wikipedia's articles, it's the /usage/
(as well as the associations in the public mind).

>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.

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.  That is not the case.
(In reality, there is probably a mixture of reasons;
the lawyers don't think that the small benefit of registration
is worth the hassle with the USPTO's scepticism about the phrase.
I suppose that we could write Pepsi and ask them. ^_^)

-- Toby