In article <3887101B.48736CC0@umh.ac.be>, Fabian Brau 
<fab### [at] umhacbe> wrote:
>But when you make a trademark for a name, if I remember well, you 
>much choose some category for your trademark. You can choose all
>catergories, in this case nobody can use this name, this is 
>certainly the case of big company like coca-cola; or you
>choose one or more categories (this is cheaper I think!) but 
>in this case if one use your name in another category you cannot 
>say something!

It isn't that you choose the 'categories' when you trademark the name, 
but that the name helps define the 'categories' in which you can receive 
protection. (You may also be confusing trademarks, which result from 
presenting a name to the public, with registered trademarks, which 
require registration.)

Sometimes this is easier to think of as protection for the consumer. If 
the use of the name in the situation in question would cause confusion 
among consumers, then it is a trademark violation. This is a gross 
oversimplification, but can help when thinking about trademarks.

So, if you have a name, such as Persistence of Vision, which is a 
description of something relatively common, you're not likely to get 
trademark protection if someone, say, uses the term "Persistence of 
Vision" to describe persistence of vision.

But if you have a complete nonsense name, say "Glorbl Makr 
Technologies", chances are pretty good that any use of "Glorbl Makr" to 
market (and I use market in the extremely broad sense of presenting to 
the public) anything other than your own products is a trademark 
violation. "Glorbl Makr" has no meaning beyond the meaning that your 
company gave it.

As a company, if you want to "get serious" about trademarks, you want a 
name that (a) is a good name for your product, but (b) cannot be easily 
hijacked as a description.

Coca-Cola is an interesting example. When it came out, it was a 
piss-poor example of a trademarkable name. All it is is a list of 
ingredients. It would be like coming out with a line of cotton shirts 
and calling them "cotton". You'd be lucky to get a trademark within the 
shirt business, and would never be able to stop people from using 
"cotton" to describe cotton.

Later on, Coca-Cola removed cocaine from their drink due to racism 
(there is still, supposedly, flavoring from de-cocainized coca leaf in 
classic coke, and to maintain the buzz they fortified it with caffeine), 
and of course later still those same racist elements resulted in cocaine 
becoming illegal in the United States. (I have some doubts as to how 
much kola nut is in modern Coca-Cola as well.) Combine the inability for 
anyone else to come out with a true "coca" product with the near 
ubiquity of Coca-Cola, and they have a pretty good stranglehold on the 
name. Any use of the term "Coca-Cola" to market anything other than 
Coca-Cola would be considered confusing today.

I doubt that it is generally good policy to choose a trademark in the 
hopes that the main ingredient in your product becomes illegal. :*)

And part of the reason trademarks need to be protected is that they can 
fall into common usage. If the public considers your product's name to 
be a general name for that type of product, you are not allowed to stop 
people from using your product's name to describe their products. 
"Kleenex", for example, either is or came very close to falling out of 
trademark because it became the name everyone uses for Kleenex. I think 
that Xerox came very close to this, as did "coke" for any cola drink. (A 
possibly apocryphal story is that Coca-Cola hires people to go order 
"coke" from restaurants. If they receive something other than coca-cola, 
the restaurant gets a legal warning from Coca-Cola. I've never seen any 
verification of this story, though it was passed on in an advertising 
class I took in college.)

IANAL

Jerry

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