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Trademark. I want to name a product with a geographical location, but someone else has it trademarked. Am I out of luck?

Tacoma, WA |

Example: I want to name a candy bar after the Matanuska-Susitna Valley, but someone has already trademarked a cookie with Matanuska-Susitna Valley in its name. Does that mean I cannot trademark my candy bar or use it without being sued?

Attorney Answers 6

Posted

A geographic location can serve as a common law trademark, either alone or in conjunction with other words or designs. Those words may not be registrable as a trademark with a state or the federal Trademark Office but registration is wholly voluntary and is not necessary to create trademark rights. Only your own trademark attorney can evaluate whether the trademark you'd like to use would infringe the already-existing trademark rights, if any, that brand the cookie. My gut reaction is that it would. But you need to speak with a trademark attorney licensed to practice in your state. Good luck.

The above response is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.

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Posted

Different companies can use the same geographical designation in a trademark. However, parts of the trademark in addition to the geographical designation might or might not be available to use, depending on whether it creates a likelihood of confusion.

You should consult with a trademark attorney.

The answer provided is only for general information purposes and does not constitute legal advice.

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Posted

If your facts are correct, I think you have a legal risk if you brand your candy bar with such a unique geographical name as Matanuska-Susitna Valley. The general rule is that anyone can use geographical terms unless they have come, through long term exclusive use, to have secondary meaning as being a brand name. For example, "FLORIDA GEORGIA LINE" is certainly a geographical term, but if you use it for your new country pop band you are going to be sued in a country minute by Big Machine (a Nashville label) and/or Brian and Tyler and lose badly. Or if you name your candy bar MILKY WAY, a very "universally" geographic term, you will be eaten by Mars, Inc. For yours, I think very little use would be required by the cookie maker to get the requisite secondary meaning since the name itself is so distinctive. So, I think you should not use it and that if you do you should expect to be sued and you should expect to lose and have to change brand names. A second comer has a legal duty to avoid any likelihood of confusion as to source with existing branded products. I don't see how this choice could be deemed to meet that duty. But, I can sure see how a judge might decide you violated that duty if you picked Matanuska-Susitna Valley as a brand name for a cookie knowing there was already a candy bar by that brand name.Total originality is the safe route, not a "me-too, I'm like them" name. If you still want to do this, despite knowing it is risky, see an experienced trademark attorney for guidance on how to minimize your risk and how to maximize your own protection. You will be taking an expensive and dangerous road I think. As Robert Frost said "Take the road less traveled" and he went on to say "and that has made all the difference." Wise words for brand selection as well as forks in the road.

I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.

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Posted

Interesting question. Gut response is that I would never want to eat a candy bar called a "Matanuska-Susitna Valley Candy Bar." I'm sure it is a really wonderful place, but I think that the value of this name versus the cost of litigating a trademark dispute with a pre-existing cookie maker's use of the name (I wouldn't want to eat cookies with that name, either), would be a waste of your time and money.

Perhaps you should consult with a local trademark attorney about names, and ask to put something like "proudly made by the people of the Matanuska-Susitna Valley," on the labels. That does NOT require a trademark, and would simply be a matter of accurate labeling of geographic origin, which is not something that is trademarkeable (yet) for most food products.

Certainly the folks in Champagne and Bordeaux and Burgundy want the trademark for their region on those wines, but there is not regional cookie or candy-making trademark yet.

Best of luck in your new business venture.

This does not constitute legal advice or the engagement of my services as an attorney.

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Posted

There are quite a few of us IP lawyers here in WA that offer free consultations. I would recommend you avail yourself to one of use and get some solid counseling so you don't end up expending a ton of capital on developing your product only to receive a Cease & Desist.

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1 comment

Joshua A Haubenstock

Joshua A Haubenstock

Posted

*us, not use. Avvo needs an edit function!

Posted

My colleagues offered some great insights here. The short of it is that you are not per se precluded form using that, but you may not want to even if you can and case depending they may have a claim against you if your did.

I will add further that whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence upfront and before you submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property. See the link below for a detailed explanation of the due diligence process and a guide on how to choose a strong trademark.

I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.

Best regards,
Frank
Natoli-Lapin, LLC

DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed with the law firm of Natoli-Lapin, LLC on the basis of this posting.

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Frank A. Natoli

Frank A. Natoli

Posted

Sorry for the typos...

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