Another common word has been trademarked

In cross-border business, "infringement pits" have tripped up many people, and sellers are particularly cautious about this. However, the number of cases where common names of goods and common words have been registered as trademarks has gradually increased, and some product links have been removed from the shelves as a result, causing great indignation in the industry.

Recently, the commonly used word "Compatible   "with" has also been applied for trademark registration. This is a high-frequency word in product titles and descriptions. If the registration application is approved, which categories will be affected? What is the current review progress of the Trademark and Patent Office? We found the answer.

“Compatible   "with" was applied for a registered trademark

Recently, cross-border sellers have found that the commonly used word "Compatible   "Compatible with" has been applied for trademark registration. "Compatible with has been registered as a trademark? If it is true, won't a large group of people have to pay compensation and have their products removed from the shelves? How should we write titles for accessories related to big brands?" asked a seller.

The editor found on the website of the United States Trademark and Patent Office that “Compatible   "with" was submitted for trademark registration on December 13, 2022. The US serial number is 97716384. The applicant is a Hong Kong company.

This trademark application meets the basic application requirements and has been accepted by the competent authority, which has assigned the application to an examiner. On February 20, the examiner sent a non-final rejection email to the applicant, and the applicant can respond to the examination opinion within three months, make a defense or provide additional evidence.

Search for "Compatible" on Amazon US   "with", there are more than 100,000 search results, auto parts and 3C electronic products are the most used, and smart home, outdoor camping supplies and other categories are also used.

Therefore , 3C sellers were the first to get upset about the application for trademark registration . Some people complained that if Compatible with can be registered as a trademark, then Compatible   Will for / for / Replacement for, which are commonly used words by merchants selling brand peripheral accessories, be registered as trademarks soon?

One seller said that this type of trademark has too wide a scope of impact and Amazon, as a platform, will not wipe them out completely. He has received complaints about this type of generic names and put the products back on sale after modifying the product details.

The seller said that the company hired a lawyer to respond to the complainant's lawyer, clearly stating that the product it registered was a generic name and lacked distinctiveness. If the other party insisted on taking the case to court, the seller would ask the lawyer to invalidate its trademark registration. After the battle , the other party did not complain again, and the matter was left unresolved.

In addition, many sellers believe that words with common meanings generally cannot be registered as trademarks, and even if they are successfully registered, the protection is relatively limited.

The seller Tu Tu sells mobile phone accessories and often uses " Compatible   She also noticed the trademark registration news and felt a little troubled. "But I think 90% of the time it won't be registered. Even if it's 10% successful, most sellers will raise objections."

Initial rejection of trademark application

Tu Tu has a lot of experience in trademark and patent matters. After searching, she found that “ Compatible   The trademark application for " with " is not in Category 9 but Category 7. Category 9 is the category for 3C accessories such as mobile phone cases and earphones, while Category 7 is the machinery category, which means that Category 9 can continue to be used.

Information shows that the trademark applied for by the applicant is applicable to the following products: automatic swimming pool cleaners and their parts, chain saws, high-pressure cleaners, mechanical lawn mowers, electric lawn and garden trimmers, power blowers for lawn clippings, electric drills, electric hedge trimmers, steam mops, swimming pool vacuum cleaners and vacuum cleaners.

"If this word is a common word in the 7 categories of industries, then it cannot be registered. Even if it is registered, the result will be what I said before, and the seller will raise an objection."

According to information published by the U.S. Patent and Trademark Office, the “ Compatible   The following are pictures of the use of " with " on products:

The non-final rejection opinion gave the reason for the preliminary rejection of the application, which was precisely its generic nature.

The applied “COMPATIBLE WITH” is a widely used colloquial term or expression that simply conveys a recognized concept. When consumers see the word COMPATIBLE WITH, they usually think that the word means that the product itself can be used together with products of other brands, such as a mobile phone case suitable for xxx, etc., and they do not think of it as a trademark.

The OA document also provides a series of evidence from Google, eBay, Amazon and other retailers to prove that the term "COMPATIBLE WITH" is commonly used by people in the applicant's specific industry, that is, to indicate that a product can be used together with other products.

The trademark application has been preliminarily rejected, but the applicant can continue to provide additional evidence to support its registration . Some sellers believe that the applicant is less likely to file a defense, and if it gives up its exclusive rights, the impact on cross-border sellers will be smaller.

Trademark applications from Chinese sellers surge

In the past, the Trademark Office's review was relatively lax, resulting in many common words being registered as trademarks . Generic and other words are a lesson learned. A seller was complained of infringement for using "generic" and his account was frozen ; VR BOX was also once registered as a trademark, and its owner WOW VR complained to sellers who infringed on it, and the PayPal accounts of many sellers were frozen.

In recent years, the domestic overseas expansion trend has continued to grow, and the demand for cross-border sellers to register brands has increased sharply, and they have gradually become one of the main customer groups of the European and American Trademark Offices .

In 2021, Fortune reported a surge in trademark applications from China. Trademark Commissioner David Gooder claimed in a blog post that trademark applications had "surged to unprecedented levels," with applications up about 63% as of June 17 over the previous year.

The USPTO studied the reasons behind the surge in applications, pointing out that this was due to a simultaneous increase in domestic and foreign applications and the growth of e-commerce during the pandemic. The rapid growth of the digital economy and DTC companies means the birth of more brands, which in turn creates demand for trademark applications.

Trademark attorney Josh Gerben crunched the numbers, noting that as of 2021, 29% of all trademark applications came from Chinese applicants, a staggering change from less than 1% in 2010.

One quarter of US trademark registrations in 2020 came from China

The surge in trademark applications from all parties has slowed down the review process at the Trademark Office and made it more difficult for new companies to find available trademarks for their brands. This is because once a trademark is successfully registered, the holder will prevent the same or similar trademarks from being registered, which is a common practice, and many new brands are stumbled at this stage .

For cross-border sellers, it is not easy to register a trademark, which requires avoiding existing brands and giving it certain meaning so as to tell a good brand story. Therefore, some sellers decide to first select trademarks that meet the registration requirements, complete the registration and filing, and then write a brand story for them after they become bigger and stronger in the future. This is also an expedient measure.