Interpretation of phrase "X, namely Y" in trademark?


2

I have a question regarding how a certain aspect of trademarks should be interpreted in the general sense, but I'll provide some of the specifics of my situation as a concrete example.

The General Case: The general question is, when I search through trademarks on http://tess2.uspto.gov/, under Goods and Services, I often see things that state something along the lines of "G & S: Some broad category X, namely, some subcategories, Y, Z, and W."

The question here is, how do I interpret this kind of thing? Does the trademark hold for all things in the broad category, with the listing of subcategories being just some examples of this, or is the trademark limited to just the subcategories identified?

My Specific Example: As an example, in my specific case, I'm looking at a title for a book. I'm strongly considering using the phrase "Monster Manual" in my title. There is a trademark for "Monster Manual", which states "G & S: publications, namely instructional booklets for the playing of role-playing games."

My book would not be for a role-playing game. In fact, it's not for a game of any form. As an example, let's say it's a biology text book that I wish to call The Monster Manual of the Pacific Islands.

How likely am I to run afoul of the existing trademark in this kind of a situation?

(Note: I know a lot of people are naturally thinking of the answer, "You need to talk to a lawyer about this." It's a valid point, and if I get serious about using this title, I'll talk with one. For now, though, I'm just trying to get better at interpreting these trademark filings, so that I can discard ideas that are unlikely to fly.)

Trademark Publishing

asked May 8 '13 at 07:54
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rbwhitaker
3,415 points

1 Answer


2

This is not legal advice -- get a lawyer to help you.

You traditionally wouldn't trademark a title of a book - as a trademark is meant to protect things (pictures, words, slogans) that are source identifiers. However; it is not uncommon for people to trademark series of books (i.e., Chicken soup for the soul, the box car children, etc.).

With that said, a main issue with trademarks is confusion; Would a consumer who saw your book think it was from the person holding the trademark in question?

Here, would a shopper see your book title and think that it content sold from the holder of the "Monster Manual" trademark? I wouldn't think so. Moreover, without looking at the actual trademark you have in mind (the link is dead), that title (Monster Manual) seems very generic and descriptive; and since you are using the words in their traditional sense (it seems like, if your making a text book), it is unlikely you would be found in violation of that trademark.

answered May 9 '13 at 06:39
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Matt
49 points

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Trademark Publishing