Q: Can you trademark a generic search term? A competitor is claiming they own it and i cannot use it on my site.
I sell Long Island Wine Tours, a competitor claims they "OWN" the trademark:
http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4801:91vdmw.6.1
And it is registered. They are demanding that i remove all mentions of "Long island wine tour" from my website since they own the trade mark. I can't believe that this is legal as it's the name of my service. Does he actually have the right to demand we stop using "Long Island Wine Tour" ?
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A:
The disclaimer on the USPTO for their Trademark states:
Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "WINE TOURS" APART FROM THE MARK AS SHOWN
So, while they may own "LONG ISLAND WINE TOURS" both "Long Island" and "Wine Tours" aren't part of the claim. You can use WINE TOURS OF LONG ISLAND for instance and they probably wouldn't have a good claim against you even though you are using the exact same words just phrased differently and adding the word "of" may make it distinct enough.
The general rule for trademarks is whether it's likely to cause confusion in the market place, many factors, including the words go into that.
I love working with TM client's, so feel free to reach out for me for more specific guidance if you like.
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