Groklaw Explains the Cyberlaw "Trademark" 37
I Don't Believe in Imaginary Property writes "PJ of Groklaw has written in more detail about the lawyer trying to get a servicemark on the term 'cyberlaw'. (We discussed this here a few days back.) First, she notes that it's only a trademark application at this point. Furthermore, 'cyberlaw' is a generic term with 300,000+ hits on Google and an entry in some dictionaries and reference sites. In other words, while it's silly for a law firm that should know better to file a trademark application, it shouldn't and probably won't be granted if the law is followed. The article is interesting because it spells out the difference between trademarks and servicemarks, as well as explaining the law surrounding them — a law that differs significantly from copyright law."
Good overview, but note... (Score:3, Insightful)
PJ as usual gives a good overview of what is going on. What she doesn't really spell out is that the mark needs to be viewed in reference to each one of these services. It is possible that CYBERLAW, when used in connection with some of these services, is descriptive, and not really generic. However, in this case, it may be so highly descriptive with any of these services that no amount of evidence will be sufficient to prove "secondary meaning" (i.e., acquired distinctiveness) - which just means that CYBERLAW for this guy will never become like INTERNATIONAL BUSINESS MACHINES has for IBM. In that sense, the difference between generic and descriptive is pretty moot.
It always concerns me when I see a laundry list of goods and/or services in an application, especially in this case, when most, if not all, of the services listed generally fall under the USPTO accepted identification of "legal services". That it is often a sign of an inexperienced trademark attorney.