[Foundation-l] Re: Registering Wikimedia trademarks

Sun May 2 01:15:53 UTC 2004

Peter Jaros wrote:

> On Apr 29, 2004, at 1:32 AM, Michael Snow wrote:
>
>> 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.
>
> Sort of like "fair and balanced?" 

Trademark protection is not available for merely descriptive terms, or 
for deceptively misdescriptive terms. So regardless of whether you 
actually believe this particular network's slogan, it shouldn't be a 
trademark, right?

As it turns out, "fair & balanced" is a registered trademark (actually a 
service mark, since news broadcasts are a service and not a commodity). 
One thing I neglected to discuss is that descriptive terms can become 
trademarks if they acquire "secondary meaning". This pretty much means 
that the term becomes so closely connected with the product or service 
that the public automatically associates the two. You may note that I 
have been coy about identifying the owner of this mark, but I expect 
that most people reading this have already recognized that it belongs to 
Fox News. I think that illustrates my point about secondary meaning, and 
gives Fox a decent argument for trademark status.

Anyway, this prompted me to look up whether Pepsi has actually filed 
"light, crisp, and refreshing". Well, they have, but only as part of the 
Diet Pepsi logo, and in this filing they disclaimed any exclusive right 
to use "light", "crisp", or "refreshing" aside from the logo. I don't 
think Pepsi would have a good argument, because when I read the phrase, 
I don't immediately think of Diet Pepsi. But Pepsi does have a 
registered trademark for "SO LIGHT. SO CRISP. SO REFRESHING."

--Michael Snow