muggles, the term/trademark law

[heidi.h.tandy.c92 at alumni.upenn.edu]

No: HPFGUIDX 12747

--- In HPforGrownups at y..., "Amy Z" <aiz24 at h...> wrote:
> Heidi, help us out here--isn't it all but impossible to trademark a 
> term like this?  Especially since it's been around for years with 
> many other meanings; the drug reference, e.g., is decades old--
muggle 
> has meant marijuana since before JKR was born.  
No, you can trademark a  common "dictionary" word for goods & 
services, especially if the word, as applied to the goods, is 
arbitrary. It's like using the term APPLE for computers or RIO for 
MP3 players - they're regular words, but mean nothing, other than the 
brand name of the goods themselves. 

> 
> So doesn't Stouffer have to prove much more than "she uses the term 
> Muggles and I use the term Muggles" in order to have a case?  
Yes, she does. SHe has to prove that there's likeihood of confusion 
between JKR's goods and her goods - and she has to show more 
than "Friends of mine asked me if I had let her use my mark..."  This 
exact thing was an issue in a case I worked on back in 1997/1998 
where we represented Conde Nast in a suit filed by a magazine called 
Sports Traveler - the judge said that it had to be consumers who were 
potential customers of one of hte parties who were confused, but 
friends & consultants to the plaintiff don't count.

> And 
> does it help JKR that someone else has already been using the term 
> Muggles for something completely different?

Since one of the people who'd been using it was using it for dolls, 
it does help JKR. Also, it is evidence against Stouffer's contention 
that she coined the term MUGGLES and it doesn't exist as a word 
independant of her (whereas other "coined" terms like Marimba, 
Everready and Doonsbury didn't exist before their creators developed 
them).

 
> Feel free to tell me to wait for the FAQ.
Nah - hope this helps!