Trademark Trademarked Generic Phrase

[smx1]

Jurisdiction

US Federal Law

A physical therapy company located in PA has a registered trademark/service mark for the phrase "The Power of Physical Therapy". Easy to look up based on the phrase, but the USPTO registration number is 4322197.

They are sending out cease & desist notifications to other physical therapy companies using the phrase for various online content like the titles of blog posts. (The titles are typically a combination of the phrase plus something else, like Managing Pain-The Power of Physical Therapy etc.)

A regular Google search for the exact phrase ("the power of physical therapy" - Google Search) shows hundreds of thousands of results. Even a verbatim search "the power of physical therapy" - Google Search shows a long list of results from dozens of other physical therapy companies and other organizations.

They also claim that the phrase "The Power of PT" is likewise covered under the same registration as PT is commonly understood as having the same meaning as physical therapy.

Is this claim enforceable for the above usage, ie title of content/blog post NOT a slogan or program name? It's a fairly generic phrase and most of the use revealed by Google is not by the company.

 

[adjusterjack]

Is this claim enforceable for the above usage, ie title of content/blog post NOT a slogan or program name?

Wrong question.

The right question is how much money do you have available to spend on attorney fees to defend a lawsuit even if you are right.

If you think they are bluffing make sure you have the money set aside in case they aren't.

 

[smx1]

Wrong question.

The right question is how much money do you have available to spend on attorney fees to defend a lawsuit even if you are right.

If you think they are bluffing make sure you have the money set aside in case they aren't.

That's true for most cases. Clearly not worth much time and money... Still interested in a hypothetical answer, though, even if it's not practical.

 

[adjusterjack]

Still interested in a hypothetical answer, though, even if it's not practical.

Not gonna happen. Nobody here is clairvoyant (as far as I know). We have no idea what's in the mind of the owner of the trademark.

You want odds about whether you'll be sued or not? Well, I'd say 50/50. You'll either be sued or you won't be sued. Does that help you?

 

[cbg]

For what it's worth, you might try googling Faleena Hopkins Cocky and see what you find.

 

[welkin]

For what it's worth, you might try googling Faleena Hopkins Cocky and see what you find.

The Authors Guild and the Romance Writers of America challenged the trademark and won in Federal court in 2018.

The word is too common to trademark and there was no confusion in the public domain.

Hopkins surrendered her trademark.

 

[adjusterjack]

The Authors Guild and the Romance Writers of America challenged the trademark and won in Federal court in 2018.

I'll bet it cost bags full of money for the attorney fees to take that Cocky woman down a peg.

@smx1, if you have tens of thousands of dollars for attorney fees you are welcome to challenge the trademark and may actually win.

But note the comment by Jamila Jasper "I have to admit I am intimidated because I don't have many resources to fight this legally if she does pursue,"

Romantic novelist's trademarking of word 'cocky' sparks outcry

 

[zddoodah]

Is this claim enforceable for the above usage, ie title of content/blog post NOT a slogan or program name?

Because it is a registered trademark, there is a presumption that is enforceable. If you're asking for predictions what would happen if someone challenged the mark for genericism, there is no way anyone here could intelligently predict that. All I can say is that your argument is not, on its face, frivolous.

 

[cbg]

I'll bet it cost bags full of money for the attorney fees to take that Cocky woman down a peg.

This was actually my point. While she lost, it was a long and expensive fight.

 

[flyingron]

Understand that there is a difference between a single word (especially a descriptive one like cocky) and a full phrase like you posit.

Note that it also matters how you used the phrase. I think they're in a rather thin situation if it ever went to court, and it's really easy to write cease and desist letters but more costly to actually file a claim and harder to prevail.

That doesn't mean that the complainer can't make your life miserable with various venues from social media to online access points like Ebay/Etsy/Amazon etc....

 

[smx1]

Thank you all. That Cocky case is very interesting and exactly the expected kind of insight from this group (not odds or clairvoyance... though that would be nice) Understood that each case is unique. It's likely not realistic for any individual organization to take the risk but a larger group of companies perhaps together with industry organizations may be able to justify the resources and have the common interest in discouraging similar behavior. Very relevant, indeed.

 

[adjusterjack]

a larger group of companies perhaps together with industry organizations may be able to justify the resources

Exactly.

Here's one:

American Physical Therapy Association

See if they are addressing the issue.