Do you see a problem with our TM application?

[theDIfellas]

I am trying to trademark two words. I'll use the following as an example: Cocoa Puffs, a registered trademark.

Whenever displayed, it always only reads Cocoa Puffs with the small circled R.

The trademark I'd to register is 2 words (just an example: Cocoa Puffs) but on product and package, the 2 words are followed by one more word that names the product; i.e Cocoa Puffs Cereal

I would like this because if my company comes up with another product say "waffles" I'd like to display it as Cocoa Puffs Waffles with the circled R following only Cocoa Puffs.

The USPTO says I would have to trademark all of "Cocoa Puffs Cereal" and file a separate application for "Cocoa Puffs Waffles."

Anyone have any advice? Maybe I could place my two words (again, just an example) as follows: CocoaPuffs, apply for that and try to use Cereal or Waffles right after the combine word?

[Dan Furman]

Hmmm... I don't see how your example is different from Kleenex Products (http://www.kleenex.com/NA/Products/Kleenex-Dinner-Napkins.aspx). Or am I misinterpreting? Maybe because Kleenex is one word?

But wait, we have Mrs. Smith's (http://www.mrssmiths.com/)

What does the USPTO have to say about that?

[vangogh]

I'm surprised they'd have a problem with that too since I can thing of lots of examples like Cocoa Puffs (mmm...cocoa puffs. I'm coo coo for cocoa puffs - someone had to say it. You were all thinking it.) where the USTA doesn't seem to have a problem with it.

Are the two words your company name? Does the product have to have the extra word after it? Is that extra word part of the product name or could it be a generic word like cereal.

Maybe that's the difference. Cereal is a word that's been with us whereas the cocoa puffs part is new. Would your extra word at the end also be an uncommon word or is it already the word for the category of products?

[theDIfellas]

Hmmm... I don't see how your example is different from Kleenex Products (http://www.kleenex.com/NA/Products/Kleenex-Dinner-Napkins.aspx). Or am I misinterpreting? Maybe because Kleenex is one word?

But wait, we have Mrs. Smith's (http://www.mrssmiths.com/)

What does the USPTO have to say about that?

Those are two good examples but if you take a look at the packaging, you'll see that "Napkins" or "Pie" do not follow the registered trademark i. e. Kleenex.

Our product will have one word, one generic word that describes the product. This is simple part of the product name. The two words we are trying to trademark are not our company name.

I'll talk to the USPTO and see what they think about us combining the word.

A couple of lawyers told me this wouldnt be an issue.. I need to find a way around it!

[vangogh]

Hopefully you can find a way around this. Hard to offer too much without knowing the specifics, but it's understandable why you wouldn't want to offer those details until this is worked out.

[Evan]

A brand name that is being trademarked is the only thing that you need really.

For example, Pizza Hut(R) is fine. No need for Pizza Hut Pizzeria (R). This way if Pizza Hut decides to start selling Pizza Hut Sandwiches, it's all under the brand of Pizza Hut.

[Business Attorney]

I think the confusion is probably in how you are using the mark. You can certainly use a mark to identify the source of more than one product. For example: Kelloggs® Nutri-Grain® Cereal Bars, Nutri-Grain® Fruit & Nut Bars and Nutri-Grain® Yogurt Bars.

Kelloggs® covers a wide variety of products, while Nutri-Grain® covers a more narrow range. But in each instance, it is relatively clear what constitutes the mark and what does not.

In your case, if your use in your specimen appears to treat all three words as one mark, then you cannot register just 2/3 of your mark. You just need to make sure that your use conforms to what you want your mark to be.

[theDIfellas]

I think the confusion is probably in how you are using the mark. You can certainly use a mark to identify the source of more than one product. For example: Kelloggs® Nutri-Grain® Cereal Bars, Nutri-Grain® Fruit & Nut Bars and Nutri-Grain® Yogurt Bars.

Kelloggs® covers a wide variety of products, while Nutri-Grain® covers a more narrow range. But in each instance, it is relatively clear what constitutes the mark and what does not.

In your case, if your use in your specimen appears to treat all three words as one mark, then you cannot register just 2/3 of your mark. You just need to make sure that your use conforms to what you want your mark to be.

Thanks and thank to everyone else for their input.

After visiting and asking a couple others online (like the lawyers at avvo.com), this is the same conclusion I came to.

I think we will be changing our design layout on the product so it just reads the first two words, which is what we'd really like to trademark. We'll include the third one (the generic term, like Cereal) maybe in a slogan/phrase on the product and/or package that we'll have to trademark separately.

This IP stuff sure isn't fun but I'm glad Im learning it. Entrepreneurs.. so few of us, especially today.