When is a Service Mark Too Generic to Defend

I have been foolish, but not malicious, and now I need what seems to me to be a simple answer before I proceed.

I filed a dba with my county in Michigan for a unique business name. Following the advice of SEO experts, I chose a combination of common keywords, unrelated to my business name, when selecting my URL. I now have my business site hosted at (fictitious name to protect id) miplumber.com.

I recently received an email and subsequent postal packet from the folks who were somehow able to convince the state of Michigan to grant them the service mark for "Michigan Plumbers" (prior to my use). We provide the same basic services in different areas of our state. They use the business name "Michigan Plumbers" and their URL is michiganplumbers.com. I use my unique business name and can be found at miplumber.com but do not attempt to confuse visitors into thinking I'm them (because I'd never heard of them before, despite being the organizer of a large network of plumbers in Michigan).

My questions are:
Did the state of Michigan violate its own laws by allowing such a generic term to be service marked?
and, of course
What should I do now?

Several plumbers in Michigan are eager to know the answers as we've been informed, by the holders of the mark, that we have no right to refer to ourselves as "Michigan Plumbers" any more...

Thank you in advance for any information, advice or guidance you can provide. I appreciate any opinions, even if they're not what I want to hear!

I would try objecting to the mark as having been improperly granted:

Quote:

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Quoting MCL 429.32 Registration of certain marks prohibited.

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A mark by which the goods or services of an applicant for registration may be distinguished from the goods or services of others shall not be registered if the mark:

(a) Consists of or comprises immoral, deceptive, or scandalous matter.

(b) Consists of or comprises matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.

(c) Consists of or comprises the flag, coat of arms, or other insignia of the United States, or of a state or municipality, or of a foreign nation, or a simulation thereof.

(d) Consists of or comprises the name, signature, or portrait of a living individual, except with the individual's written consent.

(e) Consists of a mark which, when applied to the goods or services of the applicant, is merely descriptive or deceptively misdescriptive of the goods or services, or when applied to the goods or services of the applicant, is primarily geographically descriptive or deceptively misdescriptive of them, or is primarily merely a surname. This subsection shall not prevent the registration of a mark used in this state by the applicant which has become distinctive of the applicant's goods or services. The administrator may accept as evidence that the mark has become distinctive, as applied to the applicant's goods or services, proof of continuous use thereof as a mark by the applicant in this state or elsewhere for 5 years immediately preceding the date of the filing of the application for registration.

(f) Consists of or comprises a mark which so resembles a mark registered in this state, or a mark or trade name previously used in this state by another person and not abandoned, as to be likely, when applied to the goods or services of the applicant, to cause confusion, mistake, or to deceive.

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Meanwhile, I see that as of this moment miplubming.com is available. Consider using that instead.

The state issues trademarks without much thought going into the process.

That trademark though, in any court, would be held invalid. First, nobody can trademark Michigan and nobody can trademark a generic word and an entire industry category like "plumber". I would tell them their trademark is worthless and invalid and to go pound sand.

If this is affecting other plumbers, you might want to do something as a group effort, or get the support of an industry association.

I think that based on the OP's statement "(fictitious name to protect id)", he's in some other line of business, not plumbing -- that was just the example. Doesn't matter since he hasn't returned.

Edward

I am in a different business, not plumbing. I do use another URL that includes another defining term to further distance myself from this mess and I am still here. ;)

However, I have put my time and dollars into advertising my original URL, should I just cave because these folks think they own the generic term and they think it extends to an abbreviation?

I would fight any claim over a generic term and tell them that and that they will loose it if it goes to court. Also, it does NOT extend to an abbreviation unless they specifically have a trademark on that which would also most likely be invalid.

In addition, there are big differences between trademarks, tradenames and service marks, but the generic words, place names still can't be claimed. Other than a service mark, if the mark consists of all generic words, it is invalid.

I think Mr. Knowitall gave the legal advice here: "Michigan Plumbing" is probably not a valid service mark because it is "primarily geographically descriptive".

The harder question is how much resources you want to put into this. It's entirely possible that you can write them back saying "your service mark is not defensive because it's primarily geographically descriptive and besides my geographic area does not overlap yours and I do not intend to expand into your area", that might be enough to make them back off. But if they decide to act like asses, what's it worth to you?

And as someone in the Information Technology field, let me warn you about SEO "experts". They are mainly experts at collecting fees. Mostly they follow a few rules of thumb which have been passed around and not validated. This "use common descriptive words in your domain name" is one of them. That may work for drugstore.com, but it didn't seem to be relevant for amazon.com, yahoo.com, google.com, jcpenney.com, bankofamerica.com ... you get the idea. Having an easily remembered name is probably more important: for example edwardsplumbing.com (it exists, I just tried using my first name). The old-fashioned idea of making your business name memorable hasn't been eclipsed on the web. Put your effort into site content rather than the domain name. Rather than paying self-proclaimed SEO experts, spend some time reading Jakob Nielsen's Alertbox column. A good one to start with is Use Old Words When Writing for Findability.

Edward

Thank you for your advice. I appreciate any help I can get.

I think I will attempt to scrounge up a lawyer to write a response letter for me that says essentially what you and Mr. Knowitall have suggested regarding the law. I feel that the obscure nature of the term for our profession might have allowed them to convince the state to grant a service mark, but they'll be hard pressed to defend it in court. Should they push further than that though, I might just have to let it go. I don't need such drama in my life.

For what it's worth, I haven't paid anyone for SEO services. I just try to read up on it and do what I can for myself. I'll be sure to start reading the column you suggested too.

Thanks again!

OK, glad you didn't pay anyone! It's important to think about how people find you. SEO is important if they find you via general searches. But if they find you by personal recommendation, it's not important at all. If they search on your business name, they'll find you, SEO or not.

Edward

Yes, typically my customers are doing blind searches on the big search engines and have never heard of me before. I'm an independent wedding officiant (not a plumber), so I don't get a lot of repeat business and while I do get some word of mouth, it's never enough.

I have my name for a URL though and that seems to be something people *do* search for and find, so I'll probably just put all my energy into the site from now on.

Thanks again!