Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[Ilse Anderson]

I have a question pertaining to either registering, copywriting or trade making the name or logo of a club....I don't know which.
By club I mean a small, private group of people (62) getting together to socialize with their dogs.  
We are non profit...do not have a club house, do not charge for membership,  just meet occasionally to socialize in various public locations and private back yards. We want to make sure the name and or the logo can not be taken away from us by someone else!
Any info welcome.

[lyza2855]

Now you are on the right forum.

Again, how do you plan on using your mark?  Federal protection is based on its use to sell goods or advertise services in interstate commerce, so are you using or do you plan on using it nationally, i.e. outside of your local geographic area?  To file for federal registration, you must eventually be able to prove you are using the mark for your services in interstate commerce.  Hope this helps.

Lyza

[Ilse Anderson]

Thanks for your reply.
I do not want to use the name for anything  other then naming our non profit Social "Club"
I do not want to sell anything nor do I want to trade anything.
I do not want to use it for commerce of any sort.
I merely want to take the name and make it ours legally so it can not be used by others.
The name at this point has not been used by anyone, but the abbreviation has. Therefore I do not want to challenge the Abbreviation nor do I want to get some rights for it. Just the complete name.
I basically just want to own the name.

[lyza2855]

I do not offer legal advice, but do hope to help explain the rules and procedures at the USPTO.  

Thanks for your reply.
I do not want to use the name for anything  other then naming our non profit Social "Club"
I do not want to sell anything nor do I want to trade anything.
I do not want to use it for commerce of any sort.
I merely want to take the name and make it ours legally so it can not be used by others.
The name at this point has not been used by anyone, but the abbreviation has. Therefore I do not want to challenge the Abbreviation nor do I want to get some rights for it. Just the complete name.
I basically just want to own the name.

Even though you say you don't want to use the mark to sell anything, understand that to claim exclusive ownership of a mark in the U.S., you MUST provide something under the mark in interstate commerce, and be able to prove it, whether for profit or not.  If you won't be offering your goods and/or services ("g/s") via interstate commerce, you can either file a state registration application, or just use the mark in your geographic area and claim common law ownership.  Common law rights are more difficult to defend but not impossible, and remember that you can't prevent others from using the same mark for different goods and/or services as long as that use does not cause confusion in the marketplace with yours.

Since you describe your mark to be used as a social club's name, my guess is that you would be providing some type of organizational services under the mark.  You need to define and describe what those services are or will be and within what area will they be provided.

For more information, go to the USPTO at www.uspto.gov/trademarks, or to your state's Office of the Secretary of State, Corporations Division.  The USPTO is fully searchable online, as are most state offices now.

[JSonnabend]

While generally correct, Lyza is wrong that "Federal protection is based on its use to sell goods or advertise services in interstate commerce".  There is no requirement that a mark be used for-profit nor in connection with goods or services "sold".  The requirement is simply that the mark be used in interstate commerce in connection with goods or services.  

Furthermore, a group may register a "membership mark" without use in connection with either, and that's what we're talking about here, I believe.

And Lyza, how is the following not "legal advice"?  How does it "explain the rules and procedures at the USPTO"?  Besides being wrong, it sounds a lot like non-USPTO "advice" to me.

Common law rights are more difficult to defend but not impossible, and remember that you can't prevent others from using the same mark for different goods and/or services as long as that use does not cause confusion in the marketplace with yours.

- Jeff

[lyza2855]

While generally correct, Lyza is wrong that "Federal protection is based on its use to sell goods or advertise services in interstate commerce".  There is no requirement that a mark be used for-profit nor in connection with goods or services "sold".  The requirement is simply that the mark be used in interstate commerce in connection with goods or services.  

Furthermore, a group may register a "membership mark" without use in connection with either, and that's what we're talking about here, I believe.

And Lyza, how is the following not "legal advice"?  How does it "explain the rules and procedures at the USPTO"?  Besides being wrong, it sounds a lot like non-USPTO "advice" to me.

I just meant that the mark must be in use to qualify for registration, however, you are right.  My bad.  I withdraw.  Very sorry.  

[JSonnabend]

I re-read my previous post (both the one above and in another thread).  I didn't mean for the tone to be so harsh.  Maybe it's the litigator in me.

For those following this or other threads where Lyza has participated, I want to say that, from everything I've seen, I think Lyza knows her trademark prosecution (i.e., PTO stuff) coming and going.  I have absolutely no doubt regarding her competency there.

- Jeff