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Trademark terms.

Discussion in 'Copyright, Trademark, Patent Law' started by intj, Nov 14, 2016.

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  1. intj

    intj Law Topic Starter New Member

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    Jurisdiction:
    European Union
    This is a two part question about EU trademarks and class terms. Suppose I want to register a trademark for selling general use hats; I want the trademark to protect me against others trying to register/use the same or similar trademark name as mine to sell same or similar products. So, for general hats I pick class 25. Now, there are two paths I can take regarding which term to put and each path will be followed by 1 or 2 questions.

    Path A: I only put term "Hats". Question 1) To keep the term, have protection of whole term "Hats" against others trying to use/register my trademark for selling hats, and not be open to attacks to my trademark by others that may lead to the cancellation of my trademark or losing the term, do I have to produce all permutations of general use hats, like fur hats, panama hats, leather hats, cotton hats, sun hats, woolly hats, beach hats, top hats, small hats etc, or some permutations like only fur hats and sun hats or just one permutation like leather hats will be enough?

    Now, path B (comes with two sub questions) : I only put term "Leather hats". Question 2a) With the term "Leather hats", to keep the term, have protection of whole term "Leather Hats" against others trying to use/register my trademark for selling hats, and not be open to attacks to my trademark by others that may lead to the cancellation of my trademark or losing the term, do I have to produce only leather hats or instead of producing leather hats, can I produce similar hats like panama hats, cotton hats, fur hats, sun hats, woolly hats, beach hats, top hats, small hats etc? Question 2b) With the term "Leather Hats", can I produce leather hats, but also similar hats, like panama hats, fur hats, cotton hats, sun hats, woolly hats, beach hats, top hats, small hats etc and still have these rights: being able to keep the term "Leather hats", protection of whole term "Leather Hats" and protection for similar hat products like panama hats, fur hats, cotton hats, and more similar hats against others trying to use/register my trademark for selling hats, and not be open to attacks to my trademark by others that may lead to the cancellation of my trademark or losing the term?
     
  2. adjusterjack

    adjusterjack Super Moderator

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    I going to take a wild guess that EU trademark laws are similar to those of the US and say that you cannot trademark a generic word like "hats" or a generic phrase like "leather hats" or any other kind of hat defined by its material unless, perhaps, you've invented a new material for which you have a patent and attach the name of the material to the word hat. That's overly simplified, or course, but you get the idea.

    You may however, attach your name to the word and trademark that combination. For example: JohnnyHat.

    If you aren't actually talking about hats, the same convention would apply to any product.
     
  3. intj

    intj Law Topic Starter New Member

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    Thanks adjusterjack for your message.

    Hats and Leather hats are not trademark names, but terms that identify the products under class 25.
     
  4. adjusterjack

    adjusterjack Super Moderator

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    Right. Class 25 includes headgear, clothing, and footwear.

    It just dawned on me that I may have misread your question so let's see if this is what you are looking for.

    If you trademark JohnnyHats, for example, you are protected against anyone who subsequently attempts to use the name JohnnyHats no matter what kind of hat they or you produce.

    But if you trademark JohnnyLeatherHats you have little or no protection against somebody who starts using the name JohnnySunHats or JohnnyFeltHats or JohnnyComeLatelyHats regardless of what kind of hats either of you produce.

    If I didn't get it that time, you'll have to explain what you are trying to accomplish.
     
  5. intj

    intj Law Topic Starter New Member

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    Hello adjusterjack.

    Thank you for your message.

    I will try to explain better.

    The trademark name could be anything, e.g. The Thirsty Manager or The Lucky Cake.

    This question is not about the name of the trademark, but about the terms that describe the goods.

    So, I will try to rephrase my questions in order to make them more understandable:

    1.
    To keep a trademark with only one class and only one term "Fashion hats" (under class 25), must I sell all fashion hat kinds, e.g. fur hats, top hats, sun hats etc or just one kind is enough (e.g. top hats)?

    2.
    A trademark with only one class and only one term Fur Hats (class 25), will only cover me for fur hats sale or will also cover me for sale of similar hats(e.g. fashion hats, sun hats, top hats, wholly hats)?
     
    Last edited: Nov 14, 2016
  6. adjusterjack

    adjusterjack Super Moderator

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    Again, my answers are based on the possibility that US and European trademark law is similar.

    Classifying your goods as Class 25 - fashion hats doesn't prevent you from selling any kind of hat nor does it prevent you from selling only one kind of hat.

    If you use the term "fur hats" it could cover you for the sale of all those similar hats if they were made of fur.

    I think you are making this overly complicated. You should be able to just select "hats" unless you will only manufacture one type of hat. Whether you manufacture one type of hat or many types of hats should be reflected in your trademark and should probably be as broad as possible.

    Examples:

    Susquehanna Hat Co - makes all kinds of hats. Class 25 - Hats.

    Acme Fur Hat Co - makes fur hats. Class 25 - Fur Hats.

    I'm no trademark expert so if you need to go further with this you'd be wise to consult a trademark attorney.
     
  7. army judge

    army judge Super Moderator

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    Warning: You could gather 2,000,000 misinformed people to agree with your misinformation.
    Arguing in court that you have 2,000,000 misinformed people who agree with your hypotheses, or legal reasoning isn't all that dispositive to the jurist hearing your case.

    If you're building a business, its best to pay for legal advice, just as you wish potential customers to pay for your products.

    This is your business, mate, for your benefit seek REAL legal advice from an attorney knowledgeable in EU, moreover CYPRUS laws.
     
  8. intj

    intj Law Topic Starter New Member

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    Thanks army judge.
     
  9. intj

    intj Law Topic Starter New Member

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    Thanks adjusterjack.

    1. But why someone would want to select Class 25 - Fur Hats and be limited in what he can produce and not select Class 25 - Hats that allows him to produce any kind of hats?

    2. And why many trademarks instead of declaring Class 25 - Hats, they declare Class 25 - Hats, Fashion Hats, Fur Hats (you get my point? Hats already covers them, right? Why they also selected Fashion Hats and Fur Hats?)
     
    Last edited: Nov 15, 2016
  10. adjusterjack

    adjusterjack Super Moderator

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