Hello,
after all the whinning that XML UI Language (XUL) is
a trademark and not a generic/descriptive term why not
lets get down to business and study US trademark
regulation for some insight?
First a disclaimer, I'm not a lawyer, a ballarina or
Elvis Presely (TM).
Now on to Chapter 1200: Substantive Examination of
Applications of the Trademark Manual of Examining
Procedure (TMEP), 3rd Edition.
Here are some selected quotes:
1209 Refusal on Basis of Descriptiveness
Extract from 15 U.S.C. §1052.
No trademark by which the goods of the applicant may
be distinguished from the goods of others shall be
refused registration on the principal register on
account of its nature unless it .... (e) Consists of a
mark which, (1) when used on or in connection with the
goods of the applicant is merely descriptive or
deceptively misdescriptive of them....
Matter that “merely describes” the goods or services
on or in connection with which it is used is not
registrable on the Principal Register. As noted in In
re Abcor Development Corp., 588 F.2d 811, 813, 200
USPQ 215, 217 (C.C.P.A. 1978):
The major reasons for not protecting such marks are:
(1) to prevent the owner of a mark from inhibiting
competition in the sale of particular goods; and (2)
to maintain freedom of the public to use the language
involved, thus avoiding the possibility of harassing
infringement suits by the registrant against others
who use the mark when advertising or describing their
own products.
1207.01(b)(iv) Similarity in Sound – Phonetic
Equivalents
Similarity in sound is one factor in determining
whether there is a likelihood of confusion between
marks. There is no “correct” pronunciation of a
trademark because it is impossible to predict how the
public will pronounce a particular mark. Therefore,
“correct” pronunciation cannot be relied on to avoid a
likelihood of confusion. See, e.g., Kabushiki Kaisha
Hattori Tokeiten v. Scuotto, 228 USPQ 461 (TTAB 1985)
(SEYCOS and design for watches held likely to be
confused with SEIKO for watches and clocks); In re
Great Lakes Canning, Inc., 227 USPQ 483 (TTAB 1985)
(CAYNA (stylized) for soft drinks held likely to be
confused with CANA for, inter alia, canned and frozen
fruit and vegetable juices); In re Energy
Telecommunications & Electrical Association, 222 USPQ
350 (TTAB 1983) (ENTELEC and design for association
services in the telecommunication and energy
industries held likely to be confused with INTELECT
for conducting expositions for the electrical
industry); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB
1963) (CRESCO and design for leather jackets held
likely to be confused with KRESSCO for hosiery).
1209.03(c) First or Only User
The fact that an applicant may be the first and only
user of a merely descriptive or generic designation
does not justify registration if the only significance
conveyed by the term is merely descriptive. See In re
National Shooting Sports Foundation, Inc., 219 USPQ
1018 (TTAB 1983) (SHOOTING, HUNTING, OUTDOOR TRADE
SHOW AND CONFERENCE held apt descriptive name for
conducting and arranging trade shows in the hunting,
shooting and outdoor sports products field). See also
TMEP §1212.06(e)(i) and cases cited therein.
I guess that clears it up. You cannot protect XML
UI Language (XUL) as a trademark because the US
regulation wants to maintain freedom of the public to
use the language involved, thus avoiding the
possibility of harassing infringement suits by the
registrant against others who use the mark when
advertising or describing their own products.
Full story @
http://www.uspto.gov/web/offices/tac/tmep/1200.htm
- Gerald
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