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[Tommie]

I live in St. Louis.  I saw that there is a trademark registration for the St. Louis Black Repertory Theater.  My question is this:  

What do you suspect they are trying to protect by their trademark registration?  

Is it from keeping other places in St. Louis opening a similar place under a similar name.  

Is it from keeping a place on St. Louis Street in New Orleans opening a similar place under a similar name.

Is it keeping stores from selling t-shirts and stuff with those words?

I dont really get it.  I am asking because I work for a similar place.  We really only do business and are only really known in our state.  At first, I thought TM registration would be a good idea, but now I am thinking it is just a waste of money.  

[JSonnabend]

There is no federal registration for the mark that I could find, so I'm not sure what it is you're referencing.  As for the strength of any such mark that does exist, I'm a bit skeptical.  The mark sounds very descriptive to me, at least at first blush for theater services.

What do you suspect they are trying to protect by their trademark registration?

Their trademark rights.

Is it from keeping other places in St. Louis opening a similar place under a similar name.

If their mark is considered distinctive, then likely yes (assuming they are located in or near St. Louis), but I have my doubts as to whether it is distinctive in fact.

Is it from keeping a place on St. Louis Street in New Orleans opening a similar place under a similar name.

Perhaps, with the above caveats.  They'd also need a presence sufficiently near NOLA.

Is it keeping stores from selling t-shirts and stuff with those words?

Maybe, again assuming they have a sufficiently distinctive mark.

TM law is highly fact specific.  If you're serious about protecting your interests and avoiding stepping on others' rights, you should contact a TM attorney directly.

- Jeff

[Isaac]

I suspect that the OP is referring to this registration associated with the info below.  Yes the name does sound very descriptive, but it would not surprise me if the mark had acquired distinguishing power in at least some circles.

ST. LOUIS BLACK REPERTORY COMPANY

Goods and Services IC 041. US 100 101 107. G & S: Entertainment services in the nature of theater productions. FIRST USE: 19761000. FIRST USE IN COMMERCE: 19761000
Mark Drawing Code (1) TYPED DRAWING
Design Search Code  
Serial Number 78179988
Filing Date October 30, 2002
Current Filing Basis 1A
Original Filing Basis 1A
Published for Opposition September 23, 2003
Registration Number 2794799
Registration Date December 16, 2003
Owner (REGISTRANT) The St. Louis Black Repertory Company, Inc. Nonprofit Corporation MISSOURI 634 N. Grand Blvd., 10th Floor St. Louis MISSOURI 63103
Attorney of Record Christopher J. Hayes
Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "REPERTORY COMPANY" APART FROM THE MARK AS SHOWN
Type of Mark SERVICE MARK
Register PRINCIPAL-2(F)
Live/Dead Indicator LIVE

[JSonnabend]

Ah, in my quick and dirty searches, I included "theater" each time.  As for distinctiveness, the answer is right there in the information you posted.

- Jeff

[Tommie]

Yes, as the OP, that is what I meant.  I apologize.  In their nature of services, it says theater productions.  Does that mean that they are only trying to keep other people from using their name to hold theater productions?    Maybe asked a better way (I am not especially knowledgeable on the subject), when does one company have to sign up for different classes for trademark protection?  If they hold theater productions, but also sell a few t-shirts and calendars, do they also have to sign up under the clothing and paper products?  When do they have to do so, and what are the different types of protection involved?

[Isaac]

The classification of services refers to what the trademark holder registered, but trademark/service mark rights are derived from usage rather than registration.   The mark holders rights are not necessarily limited to the goods or service associated with registration.

[JSonnabend]

The rights and advantages conferred by the registration are defined by the description of goods and services of the registration.  That isn't to say that the registration won't impact goods or services other than those described (they usually do), but one of the starting points for the inquiry on likelihood of confusion is a comparison of the G&S of the registration vs. those of the accused mark.

- Jeff

[Tommie]

so let me see if I am understanding correctly.  If my store name is registered as "ABC", and it is registered under the class of apparel and t-shirts and the like, the point is that if another company starts selling ABC t-shirts, it is more likely that there will be confusion than if they start selling ABC coffee mugs.  They are both actionable regarding dilution/infringement/etc., but it is just that the burden is higher regarding coffee mugs than it would be with t-shirts.  

If this is the case, when registering, when do you have to register under two classes compared to one.  A school obviously has to register under the education class, but if they sell a few t-shirts, do they also have to register under the t-shirt class, and likewise for coffee mugs, calendars, etc.  Or is it that all are actionable even if only registered in the education class, based on outside factors (Strength of mark, etc.)?

[Isaac]

One of the issues involving the registration class, is that while federal registration does not create trademark rights, it does have the effect of giving your trademark nationwide effect in areas in which you may have yet to operate.  

So if a trademark is registered in one class, but used in another, it is possible that the analysis of whether a junior mark is confusingly similar might depend on the geographic area of use of the junior user.   A federal registration in the new class would prevent this issue from arising.   It might turn out that the senior's case for likelihood of confusion is weak based on the old class, but would be stronger based on the new class in some geographic area.

In the geographic areas where the mark has been used maybe this issue is less important.

There are other issues related to advantages of registration.  I'll admit to being less familiar with those than is Jeff.

[JSonnabend]

Isaac's analysis is generally correct.  Keep in mind that you can't register a mark for goods or services you don't "do".  Regarding the school example, you are correct that a school would be well advised to register not only for educational services, but for seconary source goods such as t-shirts and the like.

- Jeff