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Can the common description of a product receive a trademark?

Can an organization trademark the name of a certain product (livestock) even after other people have been using it for several years?

I am the president of a very small business - that registers livestock. We received a letter in the mail from the attorneys for a competitor, stating that they have trademarked the name of a kind of livestock (in 2011). The competitor demands that we no longer register this livestock using this trademark. This kind of livestock was first breed in the 1980's. We have registered the livestock using this name during that time, which was before the trademark was awarded to the competitor.
My question that our local attorney was not sure of is - Can someone trademark a livestock breed name that has been used by others just like that and no one else can use it? How can I find an answer to this? Thanks.

~ Missouri

The short answer is this: The trademark is registered. You need to understand your obligation to respect the trademark rights of others. You need to understand the possibility of canceling this trademark.

If the trademark has already been registered, then, obviously they can receive a trademark. So, what do you need to do to respect their trademark? Also, you might also have evidence that suggests that they were never entitled to a trademark. So, how do you cancel their trademark?

Trademark Rights and Fair Use

First, the main purpose of trademarks is to help the public. How do trademarks help the public? Trademarks seek to prevent customers from becoming confused about who is providing stuff (like livestock). Many times, people unfamiliar with trademark law think of trademark ownership as "owning a word." This is not correct. Trademark law seeks to prevent confusion by customers -- when they purchase something with a trademark, the customer should not be confused about the source of that something.

So, it might be important to understand what goods and services are in the trademark. For example, is the trademark related to the livestock itself? Does the competitor actually raise and sell livestock? Or does the trademark include certification of some livestock? Or, does the trademark include registration services for livestock?

Also, whether your acts are infringing of their trademark rights might depend an a variety of factors. For example, how long has there been no actual confusion? How do the channels of trade differ between you and your competitor? What is the nature of the use of the trademark term?

In other words, it could be possible that your use is a permitted, non-infringing use. If the purpose of your service is to show the source of a particular animal is your competitor, then, your service is not confusing anyone, but rather, helping the consumer from becoming confused. The use of a trademark to refer to the company that produced the goods or services is sometime called the doctrine of fair use or the doctrine of nominative use.

However, there are many other facts and circumstances to consider when making a judgement about the doctrine of fair use or the doctrine of nominative use. For example, since you are making money with your service, this fact may weigh against a finding of fair use or nominative use. I strongly recommend that you work with your lawyer to determine if your use of the name comes within the scope of these doctrines.

Trademark Cancellation Proceeding

Of course, even if your use is a non-infringing use, there could be other good reasons not to allow the competitor to maintain the trademark. So, is your competitor entitled to keep the trademark?

The US Trademark Office grants trademark registrations. The US Trademark Office has a procedure for cancellation of registered marks. This is like a mini-lawsuit, however, it has just a single issue: should the trademark be allowed to continue on the Federal Register? It sounds like your prior use of the term might be evidence to show that the term was in common use (and not to refer exclusively to your competitor) prior to registration. Your attorney should be able to suggest ways to find additional evidence from others in your industry. By evaluating the evidence that you have, and by evaluating prior trademark cancellation proceedings, you and your attorney can evaluate whether to file a trademark cancellation proceeding.

There are several advantages to such a proceeding. Since the legal issue are very limited, usually the cost is also much less. Second, since this administrative court called the TTAB (Trademark Trial and Appeal Board), and, it only hears these trademark cases. The TTAB has much knowledge and expertise in trademark law. It is easier to predict the outcome of such proceedings. Finally, there is no in-person or live testimony before the TTAB. The vast majority of work is done in writing, by electronic filing, or by telephone conference. Even depositions can be done by telephone or video conference, if the parties agree. All of this works to keep costs low compared to a traditional case in federal court involving complex commercial trademark litigation.

Trademark Litigation

Finally, matters like this can end up in Federal Court, because registered US trademarks are a matter of Federal Law (and not state law). So, your attorney should also be advising you about these possibilities, including declaratory judgement actions.

Good luck with your trademark dispute.

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