Can superlative terms be used in Trademarks?

Question

Can the following sentence be used as trademarks:
"the leading music download service"


My friend was told by his competitor to remove the above sentence from his site as they have trademarked this term.

Answer 1

I did a quick search at the US Patent and Trademark Office (http://www.uspto.gov) and did not find a registration.
Trademarks are very different from other intellectual property because USE, not REGISTRATION, determines most of your trademark rights. And if a trademark owner can say that people associate a particular mark (whether it's a word, a sound [think: Intel], a color [think: John Deere for farm equipment], or product packaging [think: l'eggs pantyhose],) then it might be enforced as trademark rights.
A registration gives presumptions of validity and enforceability, but generally those may be challenged.
Here, this mark is particularly weak because it appears to be descriptive: it describes what the service is online ("the leading music download service.") Generally, that mark is not protectable unless the owner can prove "secondary meaning" (which means that consumers associate those particular words with the owner's particular goods or services, kinda like "General Motors" or "International Business Machines.").

This business may be trying to develop "secondary meaning" by using those words exclusively for a long period of time. But until they've done that, they do not have trademark rights in that slogan. (Interestingly, a google search of "the leading music download service" turns up three hits: iTunes, Ctrax, and Cdigix. I don't know if any of them actually try to use "leading music download service" as a trademark, or if that's just a description the media uses for them.)
If you want to fight this, consult an attorney before you make any decisions. Plus, the phrase may be registered under state trademark law (which may have some effect on their claim, but not much.) But it seems like their claim to any righs is tenuous at best.

Answer 2

I don't think you could patent this description, but you might try searching the US patent and trademark office website uspto.gov

Just in case, how about switching to "the leading downloadable music service," or "the leading service for downloadable music," or "the leading music downloading service," or "the top music download service," or some other thing that says the same thing with slightly different words.

You could also qualify your market, like "the leading music download service for the college market," (which I found on a Google search for your phrase.)

Finally, your friend could change "leading" to something else, like coolest, best, etc. These words are undefinable, and so there can be no arguing their validity.

Answer 3

Think of "Best Foods".

But "the leading music download service" is DESCRIPTIVE. The competitor is blowing smoke.

But then, what do I know, except I took a course in this in law school decades ago.

I doubt that it's a registered service mark (vice trade mark), although it may be claimed as a service mark it will never hold up in court. In fact, there's more: if someone tried to sue them on the basis that they're really not the leading music download service (I think Limewire might be that, these days; or iPod if you're talking legal downloads) the court would answer that it's only "puffery".

Answer 4

I'd ask to see their trademark, usually terms like that cannot be trademarked. Too generic. If they do, just change it to, "the best music download service".

Answer 5

In the cease & desist letter your friend received, there should be further details about their trademark. Typically, proof is provided in the form of a serial or registration number.

I'd suggest that your friend contact a trademark attorney to best gauge how to proceed from here. The advice he/she will need is going to be so specific to the particulars of his/her situation that no one here will be able to answer it adequately.

Hope that helps!

Answer 6

you can trademark almost anything

Answer 7

I'm not a legal expert but it just seems that THAT would be an obvious... NO!