I Have Grey Aliens Copyright: Can I Get Trademark, too?

Dear Rich: I have two copyrights on alien dolls that I make, and would like to trademark the term, "grey aliens." Is this too much of a general term or since I have copyrights, would it be possible to get the trademark? The copyrights do not state the word "grey" in their content but, drawings sent for the copyrights do state that there are color changes. We think your aliens are very stylish. (We hope earthlings appear as stylish to extra terrestrials!)
The Greys! We assume you're aware that the term "grey alien" or "greys" is commonly used to describe extra terrestrials (though there is some dispute whether grey aliens are actually grey). So, we think you may be correct that this may be too much of a general -- or generic --  term to qualify for a trademark for your dolls (and no, your copyrights won't help).
The Examiner's Response. If you seek to register the trademark, a trademark examiner might consider the term to be merely descriptive (generic). That is, the term "grey aliens" is used to represent a type or class of doll product and does not distinguish your dolls from others in that class. If that is the case, you'll receive a substantive rejection for your application and you'll need to convince the examiner that consumers identify the name with you and not with a class or type of product. Alternatively, an examiner might consider your mark to be weak (or descriptive) in which case you would need to demonstrate more than five years of sales or other evidence of consumer associations. It's also possible that your application might fly through the USPTO without objection (that occasionally happens). One suggestion to improve your chances is to consider personalizing the term, for example, "The Grey Family" or naming the aliens, for example, "Dorian" or "Jennifer" (and don't forget the alien dog doll, "The Grey Hound").

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Had Domain Name First! Do I Own Trademark?

Dear Rich: In 2008, I purchased a domain name for a service business I wanted to start (abc-company.com). I'm based in the US and did a variety of small jobs under that business name for a while but due to life circumstances wasn't really able to give the business my full attention. Recently, I decided to refocus my energy on this business and begin building it again. It turns out in 2009, somebody else registered a similar domain name (abc-company.net). They are based in the UK but have a strong US presence, and they have published a book by the same name (ABC Company) and given several popular talks under the same name. While I have the company's name on LinkedIn, they have it on Facebook. The nature of our work crosses over in many ways but our service offerings are different. Their company clearly comes up in the search results before mine and is currently more established than mine. Would the fact that we are in different countries affect the rights to who has the best claim on the trademark? Do either of us have a right to that trademark?  The Dear Rich Staff suggests you consider the following questions.

• Have You Established Trademark Rights? Your first question, regardless of the other company's use, is whether you qualify for a trademark. If yes, you may be able to claim a priority based on your earlier use of the name. Using a domain name doesn't create trademark rights. You have to use the domain name in a manner that customers associate with the business. For example, the original domain name for this blog was: patentcopyrighttrademarkblog.com, a URL that could never function as a trademark because it is the generic term for a blog about ... guess what? On the other hand, "Dear Rich" passes the test for "On-line journals, namely, blogs featuring commentary and information in the fields of patents, copyrights and trademarks." The fact that you stopped for a while may hurt you if you get into a spat and the other side argues that you abandoned the mark. But that's unlikely as abandonment typically requires three or more years of nonuse. 
• Have They Established Trademark Rights? The fact that you're in different countries may be sufficient to avoid a dispute, provided that each company caters primarily to consumers in their own country and is not concerned with what happens across the ocean. If your UK doppelgänger is expanding into American markets, they may file with the U.S. Patent and Trademark Office. You can periodically check Trademark Office records (here's a video explaining how) to see if the company has filed anything. You may object to the registration if you have sufficient basis.  Again, if the term is generic, it will be equally tough for the UK company to claim rights.
• Can You Both Claim Trademark Rights? That's possible if, like you say you offer different services. Many companies have the same or similar registered trademarks because the U.S. Patent and Trademark Office permits different companies to use the same mark if their services or goods are not likely to confuse customers (For example, nobody thinks that the people who make Arrow shirts also make Arrow staplers) 
• Do You Need a Registered Trademark? The longer that you both co-exist without any confusion, the more likely that things will stay that way and you won't have to be concerned about fighting over registrations. Here's a recent case about domain names where that issue came up. On the other hand, if  you're concerned about expanding your business or you just want to shore up your rights -- and you have $325 to file a federal application -- go ahead and file for a trademark but take a look at this information before doing so.