Caviar Nails Dispute

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In March 2012, Ciaté applied for a trademark for the word mark ‘Caviar Manicure’ and ‘Ciaté Caviar Manicure‘.  After they applied for the trademark, they apparently notified several Nail Polish Bloggers that should stop calling their manicures topped with tiny round balls, ‘caviar’ manicures.  Some people may ask, ‘what exactly is a trademark?’.  According to the U.S. Patent and Trademark Office (USPTO), a trademark is:

“a word, phrase, symbol or design, or combination of words, phrases, symbols or designs that identifies and distinguishes the source of the goods of one party from those of other”[1]

So…what does that mean to normal people? Simply put, a trademark is two things:

1. A distinctive indicator (words, symbol, phrase, image, design, photo, or combination of these),
2. Used to distinguish products or service.[2]

One can apply for a trademark with the USPTO (I haven’t taken any trademark law classes so bear with me). After applying, it may take some time before your trademark is actually approved.  How long? I guess you’d have to check with the USPTO (or examining attorney). But once your symbol or word mark is actually approved and registered, you have the right to use the ‘®’ symbol after the registered trade or word mark.  The ‘_TM’ symbol can be used for unregistered marks.  Several countries use the ‘®’ symbol for trademarks registered in that country, and I’m sure (a) treaty(ies) govern the use in multiple countries. Maybe I’ll write a post about that when I learn (more) about it.

Back to Ciaté.  They just APPLIED for their trademark.  They didn’t get it yet. And apparently sent several polish bloggers cease and desist emails.  So the question is (or ‘Issue’ for my law community) is:

Do you have the legal right to protect an unregistered trademark?

Short Answer: Yes. But if the person(s) using the unregistered trademark asserts a defense of the trademark being generic, it is unlikely the company who applied for the trademark will be successful in a claim.