trademark FUN FACT: OpenAI does not own a trademark registration for "ChatGPT"

[BocaVision]

"In fact, OpenAI did not even file a trademark application for "ChatGPT" until after the AI bot launched last year. This appears to have been a serious oversight." A thread

https://twitter.com/x/status/1738215583122919628

 

[karmaco]

They don’t have to file a trademark before a product launch to get a trademark at anytime even much later.

You don’t even actually need a trademark to have trademark rights if you are universally known by that name.

The first in use date they have listed is November 30,2022. Whether they get the trademark or not remains to be seen. There is alot about this subject on the gpt thread.

The lawyer should know full well the first in use date is what matters. He is trying to get clicks and sensationalize.

 

[jberryhill]

You don’t even actually need a trademark to have trademark rights

You may have omitted the word "registration" in there.

One does not have a trademark registration in order to have trademark rights.

Registration does provide several enforcement advantages. Filing early is helpful for a variety of reasons.

But, yes, the facts are likely to be misinterpreted by the folks who believe that a trademark registration is necessary to having trademark rights.

 

[karmaco]

You may have omitted the word "registration" in there.

One does not have a trademark registration in order to have trademark rights.

Registration does provide several enforcement advantages. Filing early is helpful for a variety of reasons.

But, yes, the facts are likely to be misinterpreted by the folks who believe that a trademark registration is necessary to having trademark rights.

Do you think this mark will ultimately remain declined as being too generic?

 

[jberryhill]

Do you think this mark will ultimately remain declined as being too generic?

That's ultimately a factual determination, based on evidence, and not a legal question.

Discussions on web forums over the last umpteen years have shown to me, domainers in general tend to have expansively optimistic ideas about what 'generic' means in trademark law.

But, first of all, I can guarantee you that it will not "remain declined as being too generic" because the USPTO did not refuse it for being generic in the first place.

The refusal issued by the USPTO is here:

https://tsdr.uspto.gov/documentview...NFIN20230525093357&linkId=5#docIndex=4&page=1

The refusal was based on being descriptive. There are several important differences between a mark that is deemed descriptive and one that is deemed generic.

A "generic" term is one which is so utterly basic to the goods/services in question that it is impossible for it to function as a trademark. For example, "apple" for apples cannot function as a trademark, because there is no way that a vendor of apples can distinguish their apples from anyone else's apples at the fruit stand by using the word "apple" for those products.

Now, if I sell apples and I call my apples "Really Ripe Apples", now I am using a term that is descriptive, since "really ripe" describes a property of the generic product apples. So now the question becomes whether consumers recognize "Really Ripe Apples" as being a particular brand of apples from a particular source, or whether they simply recognize it as a designation of apples that are at a particular stage of being ripe.

It's not up to lawyers, the USPTO, a judge, or anyone else whether consumers generally hold that perception. It's up to whatever the reality in the marketplace may be. For example, I might commission a survey of consumers as to whether they think "Really Ripe Apples" originate with a particular source, or whether they think it simply describes ripe apples. I might show magazine articles in the fruit trade about how apples which come from my Really Ripe Farms have been very successful and popular among apple customers who specifically look for my "Really Ripe Apples" when they are buying apples because they understand that "Really Ripe Apples" have a consistent quality that sets them apart from ordinary ripe apples. There is a variety of kinds of evidence that go into what is ultimately a fact-based determination of whether relevant consumers recognize "Really Ripe Apples" as a brand or not.

The example I use repeatedly here on Namepros is "American Airlines". They are American and they are an airline. But the reality of the marketplace is that people looking to book a flight do not view "American Airlines" as a category of airlines that includes United, Delta, Spirit, etc.. People understand that "American Airlines" refers to a particular airline, which has been operating by that name since 1937.

Another example is "Coca Cola". It is a drink that uses extracts from the coca plant and the cola plant. The name is literally descriptive of two ingredients of the drink. But they've been making it since 1886, and everyone knows it refers to a particular product from a particular source.

Have I, personally, looked at all the evidence and arguments they filed? No. But the question ultimately boils down to whether 'ChatGPT' is understood in the relevant market for their services as simply designating a descriptive name for a thing that lots of folks provide, or whether it is understood in the relevant market as a particular service associated with the trademark claimant.

And, people used to make dumb arguments that things like "Google" had become generic because people use it as a general expression for conducting internet searches, using expressions like "Go google that" etc.. But the fact of the matter, just like British people refer to "Hoovering" the carpet as a stand-in for vacuuming, the popularity of that usage is more of a testament to the success of the mark, and not its status as a generic term, since most of the time when someone uses "googling" as a verb indicating internet search, they are referring to use of Google itself.

So, I have no particular expertise in what the facts might be. Let me ask you - "When you use or hear the term 'ChatGPT' do you understand it to mean a product or service that lots of different vendors provide, or do you understand that term to refer to a particular product or service that originates with one source?"

These types of questions are not determined by dissecting the claimed mark into "chat" and "gpt" and then launching into a discussion of how these are, individually, dictionary terms etc.. You can do that with Coca-Cola, which is probably the most distinctive brand of anything on planet Earth. These types of questions are answered by the reality of consumer perception in the relevant marketplace. So asking me what do I think millions of other people are thinking is kind of a pointless exercise. I can tell you what the relevant law is, but I can't tell you what the facts are.

My personal understanding is that ChatGPT is a product or service of OpenAI, and that people are usually referring to their product or service when they use that term. Now, go ask a couple thousand other people, and you are well on the way to answering your question.

Finally, it can happen that a product or service becomes a categorical designation, but typically because the vendor didn't leave room for a generic indication. Some examples of this effect are cellophane, escalator, zipper and heroin - all of which were at one point trademarks, but fell into common usage as generic terms in the absence of some other way of referring to them, such as commonly-used-but-still-brands of Band-Aid bandages, Xerox copiers, whose owners are frequently careful to use the brand as an adjective for the generic product which follows the brand.

The simple answer is that, no, it will not remain refused as generic, because it isn't refused as generic. That's why, in the Action linked above, the USPTO suggests the alternative of registration on the Supplemental Register, about which I don't have the time to go into further detail today.

 

[jberryhill]

In fact, OpenAI did not even file a trademark application for "ChatGPT" until after the AI bot launched last year.

So what?

That's true of most registered trademarks in the United States. The majority of applications for registering a mark in the US are filed on the basis of pre-existing use of the mark.

 

[BocaVision]

So what?

That's true of most registered trademarks in the United States. The majority of applications for registering a mark in the US are filed on the basis of pre-existing use of the mark.

John - take up your gripe with Trademark Attorney, Josh Gerben. It was a direct quote from Mr Gerben.

Mr Gerben is the well-respected Founder of Gerben IP. Seen on NPR, CNN, WSJ, etc

https://x.com/JoshGerben?s=20

 

[jberryhill]

I wasn’t suggesting you were responsible. But I don’t care how “respected” he is, or how much publicity he seeks.

The bottom line is that the term was refused as descriptive, and so their best argument - which they are pursuing - is to establish that the mark rapidly acquired distinctiveness through use.

Just look at his Twitter thread. Those are the facts.

So, it’s kind of stupid for him to argue that they should have filed on an intent to use basis prior to use of the mark. If you think about it for a couple of seconds, you will realize that the “acquired distinctiveness through use” argument only works if you’ve been using the mark. If you file before use on an intent to use basis, then you can’t overcome a descriptiveness refusal because, duh, you haven’t been using the mark.

I don’t care how many news articles have quoted him. I’ve been quoted in the Washington Post, NPR, USA Today, and a bunch of others. Big deal. They also run horoscopes and comics. Publicity doesn’t make a dumb argument any smarter.