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Nasir Pasha


Nasir N. Pasha is the managing attorney of Pasha Law, providing essential legal services and support to businesses and corporations in California, Illinois, New York, and Texas. He oversees all of the firm’s operations and is a pivotal force in maintaining client relationships and ensuring that each transaction is brought to its best possible conclusion.

Answer by Nasir N Pasha:

There are many issues being brought up in this question. To answer fully, you'll need to understand some of the general law aspects of trademarks. Nonetheless  here an important point to understand before reading further is just because you register a trademark and it is accepted, does not mean that you can successfully enforce or defend the trademark. The enforceability of a trademark whether registered or not lies in whether (1) the mark meets the definition of a trademark, (2) its rights are maintained, and (3) the likelihood of confusion with other marks.

This answer deals with the definition and criteria of becoming a trademark as the other two issues go beyond the scope of your question. Also not discussed are the advantages that do exist when registering a mark with the USPTO, but generally they include, but are not limited to some presumptions in favor of the registrar, statutory damages, and nationwide rights.

What is a trademark?

A trademark is a distinctive sign or indicator used to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or services from those of others. The focused question that you imply, but is also the main legal question regarding trademarks is the criteria that makes a mark distinctive.

Spectrum of Distinctiveness

One may categorize this test of distinctiveness into five categories:

  1. Fanciful (like "Picasa"; distinctive)
  2. Arbitrary Mark (like "Google"; distinctive)
  3. Suggestive (like "YouTube"; distinctive)
  4. Descriptive (like Google's "Blogger"; not usually distinctive)
  5. Generic (like Google's use of "gadget"; not distictive))

Here is an infographic that gives examples of each:

"Job synonym" distinctiveness

The job synonym must fall into one of four categories of being a arbitrary, suggestive, descriptive, or generic mark. It is obviously not an fanciful mark since the job synonym is not an invented word or mark.

The job synonym could be an arbitrary mark if it is used in a meaningless context adopted in association with an unrelated service. So if the mark is being used with no relation to jobs then it may be distinctive to the extent used in that particular industry.

The job synonym could be a work that tends to indicate a product or services but requires imagination on the part of the consumer to identify the characteristic. For example, if the word was "job" but the business had to do with fighting or hitting ("job" is a U.K. slang term to hit or punch).

Descriptive or Generic
The job synonym could just be a descriptive mark that uses the plain dictionary meaning in connection with its products or services directly related to that meaning. The only way this becomes distinctive is if the mark is established with extensive use in the marketplace–a very difficult achievement. Otherwise, the mark is likely generic. Back in 2010, Google used for trademark infringement for the use of the word "gadget." Long story short, they lost.

Bottom line:
This company you refer may have gotten through the first test of being able to file which is easier than one might think; however, enforcing its trademark in an infringement case imposes a whole other set of criteria. The USPTO system is not perfect and generally relies upon private enforcement of the law. Like patent litigation, you do see some high profile cases where companies are trying to extend the scope of their trademark to mere descriptive marks, but the law is fairly well established.

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