We have identified an unused brand name we would like to use that is both generic and geographic in description , but put together can make for a great brand . The brand looks like " State + product / service offered " , not unlike " California Casualty . " As a startup , we are a bit concerned due to the USPTO geographical indication FAQ . " http : / / www . uspto . gov / ip / global / geographical / faq / index . jsp # heading - 7 " In the second paragraph it is mentioned that a brand can take on a secondary meaning and can then be protected as a trademark . But how would this work for a startup that has no brand recognition ? Do we operate with no trademark and hope some day USPTO will grant us registered status ? How do generic named brands do it ?
First off, a generic term can never be registered as a trademark. Also, a term that describes the goods/services you sell is not inherently distinctive, but can acquire distinctiveness as you use it. The trademark office generally assumes you've acquired distinctiveness after 5 continuous years of use, but you can submit evidence of distinctiveness before then, depending on the facts of the case. If you really want to use a generic term, however, you will have no trademark rights. On the geographical side things can get fairly complex. If the geographical component is meaningful (i.e, California Casualty for a business selling casualty insurance in California), then you can't register it either (and note that the generic "casualty" doesn't help you here). The inquiry is very fact-specific, so it's probably best to talk through the facts with a lawyer, but from what you have said It looks like you're considering a brand name that will be difficult or impossible to protect and make distinctive.
As the FAQ says, you cannot register a geographically descriptive mark unless it acquires secondary meaning through use and consumer association with your services or products. Normally, you don't need a trademark registration in order to have trademark protection, but the unregistered mark must still be valid in order to be protected. And a mark that is descriptive but does NOT have secondary meaning is invalid.
That means: yes, you have to use your mark for a while and generate secondary meaning before you get any trademark protection. For this reason, you should strongly consider choosing a mark that is suggestive, arbitrary, or fanciful, so that you don't have to prove secondary meaning.
You run the risk of either (i) having the examiner issue an outright denial based on lack of distinctiveness, which you would then have a difficult and costly task of overcoming in your office action response, or (ii) an offer by the examiner to move your mark to the SUPPLEMENTAL register due to the mark's geographic descriptiveness. Registration on the supplemental register is by all accounts less favorable/desirable for the mark holder than registration on the PRINCIPAL register.
You would then have to wait a requisite period of time (typically a minimum of 5 years of continuous use of the mark in commerce) before you could request "promotion" of your mark to the principal register, based on acquired distinctiveness aka "secondary meaning." Note that if you had already been using the mark in commerce continuously for 5+ years prior to applying for federal registration, you could request immediate registration on the principal register, and the examiner SHOULD be willing to agree to this, without any supplemental register waiting period. Note also that if you were willing to spend a lot of advertising and marketing money + time + effort right out of the gate, and were willing to build a convincing case (in terms of e.g. public opinion surveys, etc.), you could also truncate this wait period considerably.
From a TM practitioner standpoint, combining a geographic word/phrase (which is quite weak) with a generic word/phrase (which is completely unprotectable as a trademark, and will have to be disclaimed if used as part of a larger mark) still results in an altogether weak mark. I would advise you to reconsider, and seek something that could more easily gain public acceptance, and differentiate you from your actual and potential competitors.
I would be happy to discuss these issues with you further, should you so desire. You can reach my website and other contact information through my AVVO profile, or directly at www.thomaslegal.net.
Terry L. Thomas
Here is what you do not want to hear but need to. From a legal point of view, branding is not nearly as easy as fighting your own speeding ticket in traffic court. Your TM lawyer needs to be part of the branding team, along with your consultant and you, from the get-go, before you fall in love with a brand name / trade name you cannot register nor protect from trespassers.
How do generic named brands do it? Stupidly. A generic can never be a trademark. For example: "RED BARN" for red colored barns can never be a trademark. However RED BRAN can be a brand name for dog food http://tsdr.uspto.gov/#caseNumber=85609728&case...
What you really mean, I think, is how to business register descriptive trademarks. Well, they convince the USPTO that the trademark is capable of becoming distinctive through sufficient sales and advertising. [e.g. PREMIUM for saltines means NABISCO not that they are fancier or more expensive or better, although Nabisco hopes, generally correctly I submit, that consumers will think PREMIUM saltines are worth paying a premium to have.]
So, NEW YORK LIFE and HARTFORD INSURANCE and PROGRESSIVE and the like are branded because they are so extensively used by one company that the terms have come to mean just that company.
Back to your real question, how does a startup do that. I say stupidly because small startups will seldom be able to blast out a multi-million dollar advertising blitz like the Super Guys do and so the startup is nearly always at risk for a very long time of losing the trademark. There is a register for such marks, called the Supplemental Register, where they can be "registered" without the normal benefits such as presumption of distinctiveness and validity.
Another thing that you perhaps overlook is that trademark rights are acquired by use, so the amount of use is relevant to the strength of trademark rights. Big companies make big use and that gets big rights, even for previously merely descriptive terms. APPLE was about as generic a word as you can get, but after hundreds of millions of Apple computers, MP3 players, smartphones, and now tablet and mini tablet computers, when people hear the word "apple" there is a good chance the first thing they think of will be an electronic company not a fruit. That's how it's done. Along the way, the big company is very aggressive at claiming trademark status and maintaining exclusivity of the descriptive term to keep others from preventing distinctiveness through dilution.
And, perhaps most importantly, big time companies have big time lawyers to sue your rear if you get in their way. Startups do not have that luxury, unless you are a big time startup, but you can hire an IP attorney and make noises and try to scare people and often that works. Often it fails for startups so you need to take that into account when weighing costs versus benefits of adopting a descriptive term as a mark if you are not big time with big bucks to spend.
My recommendation for startups is that scarce assets are better spent on other things than trying to cover a descriptive term with heavy advertising. For example, hiring one of us to help with clearing and protecting a mark that is already distinctive. Even some big companies agree. For example the one with the biggest income in the world, EXXON, which adopted a distinctive mark to replace ESSO, HUMBLE, STANDARD OIL, etc. and thus began immediately with one of the world's strongest and most protectible trademarks. GOOGLE has done pretty well with the same approach, haven't they?
If you pick CALIFORNIA CASUALTY, you are going to have many, many closely named competitors and you won't be able to do anything about it. Is a weak trademark what you want? To me that is extremely foolish to do.
You have analyzed the situation yourself quite correctly. A common problem I see is people expecting great things to happen just from filing, registering, patenting, etc. These are simply the formalities, but it is the hard work building a reputation that brings the rewards.
Keep in mind that Apple is a very well protected mark.
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