[Foundation-l] Re: Registering Wikimedia trademarks

Toby Bartels 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.
>>    
>>
>"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.
>
Well, if Pepsi had invented a term like "crsip", I'd certainly be open 
to considering that a trademark. And I'm aware of the argument that you 
can combine otherwise purely descriptive terms into a trademark. 
Personally, I don't buy it in this situation. Besides, I suspect Pepsi 
might also try to discourage anyone marketing a soft drink as "crisp and 
refreshing", or "refreshing, crisp, and light".

>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.
>
I only said I wasn't a trademark examiner. But yes, the argument can't 
produce a definitive ruling on the question, because neither of us is a 
federal judge.

>>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.
>
I agree that I've made an implicit assumption, but your identification 
of it is wrong. My assumption is that a registered trademark would 
benefit Pepsi more than an unregistered trademark. We may not 
necessarily agree about how much benefit registration brings, but I hope 
you're not trying to argue that registration doesn't do *any* good. My 
point is that if you file an application and get rejected, that's a 
pretty good argument that you don't actually have a trademark. So the 
analysis I'm attributing to Pepsi's lawyers is this - that the marginal 
benefit of registration is outweighed by the risk of having registration 
denied.

I am not trying to argue that an unregistered trademark is worthless. I 
apologize for any misunderstanding I may have caused in that regard. And 
in pushing the idea of registering our trademarks, I do not mean to 
suggest that we shouldn't also take other available steps to protect them.

Finally, Toby Bartels also wrote:

>With both names and jurisdictions, our determination of what is critical
>should be based on the specific legal needs that present themselves to us.
>For example, if PhatNav refuses to respect our trademark without legal action,
>then we'll need to register the terms that PhatNav is infriniging upon
>in whatever jurisdiction will have the greatest effect upon PhatNav.
>And if PhatNav is the first immediate problem, then that would determine
>what and where we register first.
>
A trademark application takes considerable time to process (up to a year 
and sometimes longer in the US, I don't know about Europe). And of 
course, lawsuits can take a long time too, if it comes to that. So while 
the facts on the ground are important, I think an important reason to 
register trademarks is to anticipate what people may do in the future. 
We shouldn't just wait for problems to come to us.

--Michael Snow

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