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Old 04-29-2005   #22
DanB
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Join Date: Aug 2004
Location: Atlanta, GA USA
Posts: 8
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I've owned a few US trademarks and have filed TMs myself and using TM attorneys.

Okay, technically you can register single dictionary words, (the government will always take your filing fees). There's really nothing in the regs that says you can't register a single dictionary word.

Trademarking single dictionary words is seldom done (ask any good TM attorney to trademark a single dictionary word and you'll get a long speech about why you're wasting your time and money). If they are granted they are usually very weak right from the start and seldom enforceable. Again, just because the USPTO granted a trademark it doesn't mean it's strong or enforceable.

One issue with common words is you have to be able to prove "first use" in the industry that your TM is applied to when challenged. So if you wanted to trademark "monkey" for use in the technology sector, and somebody challenged, you'd need to be able to back up the claim you made of first use. Basically, all it takes is one other use of the word in the sector prior to your first use and the trademark is severely weakend and probably revoked. And since common words are, by definition, common there's a good chance that somebody else used it before, even if it is part of a longer TM, such as "Monkey Calculator". This may cause confusion in the marketplace which is another grounds for revocation. If you chose to register it and it does get through, you'll probably have a hard time defending it if needed.

Also, common words are really frowned upon because of the probable dilution of the mark (along with marketplace confusion). Even made-up words, such as Xerox or Kleenex, can become so common in everyday language that even these made-up words become diluted and eventually hard to enforce.

BTW, "Serge" is a dictionary word and a proper name. Both "serge" TMs are dead and one was a styalized form. Words that fit both categories are even trickier to enforce.

Regarding TMs, proper names can get even more convoluted. Proper names are a whole other can of worms for the PTO. If you think you own the rights to your name, you may be mistaken, such as the case of Ernest Gallo -v- Julio Gallo.
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