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[4lane]

Hi, I'm starting a new New York company that will sell a wholesale product. I want to Trademark a name, but the name is a firstname/surname that is not my own. I'm sure if I submit my application they'll ask me to prove that the name has secondary meaning, but I won't be able to prove that until AFTER it's selling. At that point, I will have already committed myself to the name in product labeling, etc. How do I get around this chicken/egg scenario?

[JSonnabend]

Speaking strictly of the secondary meaning issue (not the primarily merely a surname issue per se), there is no "chicken and egg" problem. 

Trademarks are created through use, and only after the word(s) in question actually function as trademarks, that is, as source identifiers.  Before use, a merely descriptive word or phrase does not act as a source identifier, and so is not a trademark.  You must use it to establish its source identifying function, and thereby establish it as a trademark.

- Jeff

[Yak]

I believe you can also file the mark for registration in the supplemental register.  You can use the supplemental register if the mark is not inherently distinctive or the mark is descriptive and has not as yet acquired secondary meaning and thus cannot be initially registered on the principal register.   You can then subsequently apply to have the mark registered on the principal register by showing that the mark has acquired "secondary meaning. A showing of secondary meaning may be demonstrated once the mark has been in use for a period of time.  Additionally, I believe a mark registered in the supplemental register allows an infringement action to be brought in federal court.

[4lane]

OK. In this case where a firstname/surname would be Trademarked, and a secondary meaning may be required, how would you recommend filing?

1. Supplemental Registrar, and then under the Principle after sales have occurred
2. "Section 1(b) Intent-to-Sell" under the Principle Registrar
3. "Section 1(a) Use-in-Commerce" under the Principle Registrar seeing as sales are in the near future.

As for timing, we'll be wholesaling to retailers this fall, with sales of the product in stores in the spring.

[Yak]

First off as information, "Marks that are primarily surnames (such as "SMITH SHOES" or "RODRIGUEZ COMPUTERS") are treated the same as descriptive marks under U.S. trademark law. As a result, surnames are not given protection as trademark until they achieve secondary meaning through advertising or long use. A trademark is "primarily a surname" if the public would recognize it first as a surname, or if it consists of a surname and other material that is not registrable. Once a surname achieves secondary meaning, the mark is protectable as a trademark. Others cannot use the mark on confusingly similar goods, even if they have the same name. Thus, Jane McDonald could not open a restaurant called "MCDONALDS", nor could Joel Hyatt open a motel under the name "HYATT MOTEL", since the marks MCDONALDS and HYATT have achieved." (http://www.bitlaw.com/trademark/degrees.html)

When you file for registration, you can file under the supplemental register (http://teas.uspto.gov/forms/sup).

As to what filing basis you use, 1(a)-current use or 1(b)-intent to use depends on whether you are actually using the mark in interstate commerce at the time you apply for registration.  Intent to use will require verification of use at a later date. 

[Marke]

4lane, you referred to your proposed mark as a "firstname/surname."  It matters whether it is a first name or a surname, because one need not demonstrate secondary meaning in order to register a mark with the USPTO if the proposed mark is a first name.  Only if it is "primarily merely a surname" will you have to show secondary meaning.

[4lane]

The proposed mark is both a first name and surname. Such as: "Allen Furstor".

For example, you intend to trademark the business name "Allen Furstor" for your business that makes T-shirts. You have the T-shirt designs and are about to add the "Allen Furstor" name to labeling, website, wholesale materials, business documents, etc in preparation for selling in 4 months. You want to protect the name and thus your business since the business hinges on the brand "Allen Furstor" you've been creating. However, you can't trademark it since it's not in business yet. Nor can you prove secondary meaning for the same reasons. The risk  you run is to be in the 2nd year of a successful business, at which time you can trademark the name, but someone else has since made claim to the mark. Is the only option to apply to the Supplemental Registrar until your established, and pray that it's enough to fend off those who may claim the name?

[Marke]

If your mark is a full name (i.e., a first name and a surname), the USPTO will not require you to prove secondary meaning.

[JSonnabend]

This discussion is all very good, but one point has been lost, I believe.  In my understanding, the OP is asking to register the mark before use.  Neither the supplemental register, nor the principal register are available in such circumstances.  Furthermore, filing a 1(b) will not result in a registration until after a Statement of Use has been filed.

The "primarily merely a surname" issue is ancillary to the "chicken/egg scenario" of the original question.

- Jeff

[Yak]

This discussion is all very good, but one point has been lost, I believe.  In my understanding, the OP is asking to register the mark before use.  Neither the supplemental register, nor the principal register are available in such circumstances.  Furthermore, filing a 1(b) will not result in a registration until after a Statement of Use has been filed.

The "primarily merely a surname" issue is ancillary to the "chicken/egg scenario" of the original question.

- Jeff

As the OP's explanation has developed it seems that he is planning on relying heavily on the "brand" and is looking for some assurances that the mark would be protectable.  It may make sense in this situation to perform a search and verify that the mark is not being used and then file a 1(b).  Although the mark will not register, it will be prosecuted by the examiner and by the time OP gets a notice of allowance and needs to provide the statement of use, he may be ready for sale and will then be able to provide this verification. 

As for the ancillary issue, another thing to keep in mind is that is the first name/last name of the mark refers to a living person OP will have to file a statement by that living person authorizing that the name can be used as a mark.

[JSonnabend]

Ok, I see your point.  Bottom line for anyone reading this thread looking for advice on branding is this: before you roll out your brand (before spending any significant money on promotion, packaging, etc.), always have a competent clearance search done for the brand.  Once that looks clear, an ITU or 1(a) application can be filed (as appropriate).

I cannot tell how many times new clients have come to me after launching a brand only to find it isn't clear to use.

- Jeff

[Yak]

ditto, completely agree.

[4lane]

As the OP's explanation has developed it seems that he is planning on relying heavily on the "brand" and is looking for some assurances that the mark would be protectable.  It may make sense in this situation to perform a search and verify that the mark is not being used and then file a 1(b).  Although the mark will not register, it will be prosecuted by the examiner and by the time OP gets a notice of allowance and needs to provide the statement of use, he may be ready for sale and will then be able to provide this verification. 

As for the ancillary issue, another thing to keep in mind is that is the first name/last name of the mark refers to a living person OP will have to file a statement by that living person authorizing that the name can be used as a mark.

This is correct. The product is in it's final stages of development now, to be wholesaled this fall, for retail sales in the spring. The brand labeling is about to be applied, so we want to 1) verify that there is no collusion with a similar brand, and 2) protect our brand for the future. An initial search on the brand name/mark seems to indicate that it is open (although final judgment is up to the examiner, of course). And, the first/last name of the mark refers to a non-living person.

My preference is to file a 1(a) now, and by the time it is reviewed we should have proof of commerce. But, without having the proof of commerce in hand at this moment, YAK is suggesting that a 1(b) be filed now to be safe.

But, my concern is still with providing secondary meaning to justify the mark of a first/last name of a non-living person. I understand that it will need to be proven that consumers identify the first/last name with the product, not with a specific person. But, I'm not sure how difficult that is; especially since this brand will be new. What is considered adequate proof of secondary meaning in a first/last name (non-living) case?

[JSonnabend]

An initial search on the brand name/mark seems to indicate that it is open (although final judgment is up to the examiner, of course).

Well, that's actually not true.  The examiner can only tell you if, in his or her opinion, there exists a senior registration that conflicts with your mark.  Examiners do not look into common law rights, nor are they the final arbiter of likelihood of confusion.  In other words, an allowance by an examiner, while a good sign, does not mean your risk is zero in any conclusive way.

- Jeff

[4lane]

Right. Typically you submit an Intent To Use when you have a mark that is registerable -- I don't have a registerable mark without the evidence of secondary meaning.

So I suppose the answer to my original question is really in the details of what qualifies as evidence of secondary meaning, (outside of simply being in commerce for 5 yrs). If anyone has info on this, please pass along!