Can It Be Trademarked?

Jukka · 2023-04-09T19:08:56.114Z

This thread is open to this sort of question in general, beyond this specific question.

Tricorder would get sued so fast

I wouldn’t be so sure. I did a US trademark search, and while not conclusive, it is definitely not a big no for Tricorder. You’d need to dig further.

First off Paramount Pictures abandoned their trademarks from the early 1990s. CBS attempted some very broad trademarks, in the 2010s, and the USPTO is giving them some fight.

The other thing is that trademarks only apply to specific categories, and as long as it is not easily misinterpreted it is OK to trademark the identical name in another category.

I in fact was involved with that exact thing, on one of my products, using the name of a prominent Swiss watch maker for a telecommunications product. It was given and is in force.

So for instance CBS filed in multiple categories, as for instance as a medical device. The USPTO is giving fight in that CBS has no such device. Looks to me like a lawyer made some good money off CBS and probably didn’t do them much good, and actually probably hurt their position.

Could CBS sue for a Tricorder musical instrument ? Sure anyone can sue for anything, and they might. But the ten minute look i took, says they’d likely have a tough go.

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I started this thread rather than going off-topic somewhere else. The same respect here is appreciated.

Bring your question, and we can tell you, “You have no case.”

RustyRoses · 2023-04-09T19:11:49.471Z

I think a handheld device called Tricorder would be argued to be trading off of the IP of CBS, and they would argue it might mislead people into believing it was a legitimate Star Trek product.

They don’t need to have a TM on a word for that to hold water.

Also CBS has more money for Lawyers than Korg or Moog, let alone a smaller synth maker. They could just bankrupt them by running up the cost of a defence.

Jukka · 2023-04-09T19:22:10.648Z

RustyRoses:

They don’t need to have a TM on a word

They sure have been trying hard enough to do that.

Like i said, it would be worth further investigation legally. You could at the very least apply for the trademark, you can’t be destroyed for just applying, for a trademark, 'cuz there would be no damages. If the USPTO grants it, were does that leave CBS ?

In our specific case there was no issue.

RustyRoses · 2023-04-09T20:05:15.600Z

I had a TM challenged for a business by a very large corporation. They didn’t own the TM or even anything similar, but they wanted to stop the TM in case they decided to go into it.

Our legal council suggested we comply. We excluded some rather sizable categories just so it wouldn’t result in further costs.

Now imagine that with a company that thjnks they own all Trek terms and names.

That said - Makerbot did get to release a 3D printer called the Replicator, but that was many years after Enterprise and many years before Discovery. It might not be so easy now.

RustyRoses · 2023-04-09T20:11:02.163Z

An aside - I’d expect a Tri-Corder to record 3 things - say, sound, light and EM radiation. If its not turning the latter into sound or midi, it ain’t no Tri!

shigginpit · 2023-04-09T20:11:37.632Z

in the 1950’s gretsch successfully forced fender to replace the broadcaster name with telecaster over a line of drums gretsch had at the time. Arguably these are both musical instruments, but broadcaster is more of a wide range use “word”, or even a concept if you will. So at least in that instance a “word” was enforced as intellectual property even before the world became so lawyered up.

Jukka · 2023-04-09T20:17:07.780Z

I did see that in 2013 or so CBS got some app makers to stop calling their apps Tricorder. But those were intended to look and act like the “real” thing.

At a far extreme a company has corded tires with three kinds of cord. They apply for a trademark, for their tire as “Tricorders”. Would that be permitted ?

.

shigginpit · 2023-04-09T20:19:28.528Z

you may have just discovered the sound of one hand clapping.

However, a lawyer may argue that the standard term is belt and not cord, that one would have to go out of their way to use the term cord and therefore the use and by association use of the IP is intentional. It’s enough to get it to court and run up the legal bills.

Jukka · 2023-04-09T22:48:14.045Z

Actually some tires have cords and some tires have belts. Belts are the more recent invention. Tires are still be made with cords.

Steel cord for radial tires.

Ripley's Believe-It-Or-Not :

Steel cord from tires is used in Brazil to make their musical instrument call the Berimbau.

Now let’s add to the example with the Tricorder Tires. The slogan for them is They’re Vulcanized.

jdaddyaz · 2023-04-09T22:52:40.611Z

So are we calling Polyend or not?

Jukka · 2023-04-09T22:57:40.975Z

The word trichord has many meanings in music.

Trichord Wikipedia

I have a desktop synth that assists you in generating music using trichords. I apply for a trademark to call it a Trichorder. Given that this is an original name for this sort of product, should the trademark be considered ?

chrisroland · 2023-04-09T23:01:41.075Z

the main legal test for trademark infringement is likelihood of confusion. i don’t know if Paramount even sells any goods with the “Tricorder” mark at this point, but if a synth manufacturer were to name their handheld device a “Tricorder” would the average consumer likely think it was confusingly similar to a Star Trek Tricorder toy? would it be worth rolling the dice and potential legal fees to test the theory instead of just calling it something totally original and clearly non-infringing? i know what i would probably do if i were the synth company

shigginpit · 2023-04-09T23:08:45.853Z

chrisroland:

i know what i would probably do if i were the synth company

Start a kickstarter campaign! no wait…

Jukka · 2023-04-09T23:34:41.333Z

chrisroland:

i don’t know if Paramount even sells any goods with the “Tricorder”

The first mass-produced tricorder replica was featured in AMT’s Star Trek Exploration Set in 1974, followed shortly thereafter by a palm-sized version in Remco’s 1975 Star Trek Utility Belt which was sized and marketed to young children in hopes of taking advantage of Star Trek: The Animated Series.

The first life-sized tricorder was produced by Mego Corporation in the 1990s, Star Trek replicas were mass-produced by Playmates, Playing Mantis, and Master Replicas, making commercially produced replicas affordable to the average fan for the first time. In the 2000s, Art Asylum and later Diamond Select produced prop replicas of the original tricorder.

Taken from the Tricorder Wikipedia page.

chrisroland:

would it be worth rolling the dice and potential legal fees

My attorney Bernie says he’s got it. Trademark it, and then pay whomever – Paramount Pictures, CBS, the Gene Rodenberry estate – insurance, a licensing fee, per unit. Whomever doesn’t want to pay the lawyers either, and so they’ll accept the money, just like they did with all those toy and prop companies, 'cuz they know they could lose in court too.

shigginpit · 2023-04-10T00:14:47.613Z

doesn’t the property having been licensed to a person or group by another (presumably legal owner) person or group give a legal basis to argue ownership?

Jukka · 2023-04-10T00:24:54.578Z

Depends how its written.

shigginpit · 2023-04-10T00:28:31.967Z

but star trek is an established television franchise, there is no gray area as to whether it exists or who owns the rights. your position is that the name of the equipment from star trek is not owned by the license holders of the franchise because the word is not necessarily associated with the item tricorder, but is there any known or written usage of the word prior to the show star trek?

It’s just to say that rather than an abstract concept like the microprocessor which theoretically exists in more than one capacity or form just of similar concept, the tricorder is a fictional invention of a television empire and the name is forever associated with it. Sure there may be a logical basis to construct some object not of the same nature based around the name, but the name itself is the claim to it’s documented place in “history” such as it were. I’m sure there’s some legal basis for someone to say the name is part of whatever copywrite which the franchise umbrella is covered by.

Jukka · 2023-04-10T00:29:57.177Z

Go back and read what chrisroland said. He got it right, and said it better than I did.

shigginpit · 2023-04-10T00:33:53.413Z

he is saying it isn’t worth the hassle or risk to put a gun to your head if there’s even a chance it will go off when you pull the trigger, that’s the point he is making.

chrisroland:

would it be worth rolling the dice and potential legal fees to test the theory instead of just calling it something totally original and clearly non-infringing? i know what i would probably do if i were the synth company

this is what he said. it means it’s not worth it to test your luck against cbs legal.

Jukka · 2023-04-10T00:39:50.479Z

chrisroland:

the main legal test for trademark infringement is likelihood of confusion.

That.

The name that was used for the telecommunication product i made wasn’t used before the Swiss watch company used it. But it was fine, because no one would confuse one for the other. We picked the name for other reasons, not to take advantage of a brand name. Just like the tire example I gave. That’s how the trademark law works.