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Author Topic: Surname Trademark questions  (Read 566 times)

IITravel01

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Surname Trademark questions
« on: 12-22-16 at 10:10 pm »

Have a couple questions I'm hoping some can help me with.

I understand that it's difficult to trademark a Surname in the U.S. unless it's rare or unique.  My first question is if you add a common word to the trademark application with the Surname (ie. Bogart or Tillmore), is it possible to get approved to a trademark then?  Example:  "Bogart's stew" or "Tillmore's grits" if nobody else is using it or will it also be denied for Surname or descriptive?

Second:  What if a U.S. trademark for a surname was approved in the past but has been been expired for almost a decade.  Is there a way to take over that trademark, since it was once approved, and submit a trademark application for that Surname (without having any relation to that name or trademark)?  Say there was a business open for decades called "Tillmore's" but the business closed and the trademark has expired over 5 years after the business closed and there's been no use of that trademark for over 3 years that can be found with doing a search?  Can someone get a trademark of that surname, since it was once registered but now expired, even though it's a surname and would be denied on regular surname grounds?  Here's an example of what I'd like to do.  Tillmore's for a diner and Tillmore's grits for a dish they were known for where both trademarked, but the diner closed and the trademarks have expired and there's no place that has been making Tillmore's grits for years that can be found doing a search for.  Say I wanted to resurrect the Tillmore brand and produce Tillmore's grits.  I know that if I just went about doing this without a trademark and it becomes successful, someone else could do the same with the same name and refer to the original name as their inspiration and not from the recent success of me bringing back that name, so I'd rather secure the trademark first before going about making "Tillmore's grits" (or the original trademark owner sees the success and decides to bring back their own "Tillmore's grits" even though they let the trademark expire).  So I received a E.U. trademark for Tillmore's and apply for a U.S. trademark for Tillmore's but get "Surname" denial.  Is there a way to get the trademark in the U.S. approved for "Tillmore" or should I try to apply for a "Tillmore's grits" trademark or would that probably be denied also?

Third:  Is there any way to obtain a U.S. trademark on the grounds that you already own a foreign trademark (ie., E.U. trademark with Paris Convention or BeNeLux Trademark with Madrid Protocol if that makes a difference) for a Surname (Surnames generally are allowed in E.U. trademarks:  frkelly.com/surnames-as-trade-marks-eutm-regulation )?  Or for descriptive word names (ie., San Francisco Sandwiches)?  What I'm asking is is there some kind of loophole or rule that applies if you own the trademark in a foreign location that will allow you to obtain that trademark in the U.S. for the same goods and services, even if it would usually be denied in the U.S. for either Surname or descriptive words?  I'm wondering this partly because I notice a business that opened up recently seems to have a descriptive name approved "Hollywood Burger" that I would think would be denied (ie., Hollywood Sandwich).  On this topic, I learned a bit about E.U. and Benelux trademarks through trial and error recently.  For example:  I tried to trademark a "new" word by combining two words that are usually used separate (ie., picture frame as pictureframe = denied, unless the new combined word is considered an "unusual combination" :  boip.int/wps/portal/site/trademarks/what-is/what-not/no-distinctiveness/!ut/p/a0/04_Sj9CPykssy0xPLMnMz0vMAfGjzOKdg5w8HZ0MHQ0szFwMDTxdLQLMg919DUzdjfSDU_P0C7IdFQHin0VY/   and   out-law.com/page-4297  ) but was denied still as descriptive.  But I also learned that what might be denied as descriptive in a BeNeLux trademark (ie., San Francisco Burger may be denied in BeNeLux, but get approved in the E.U.), might be approved in a E.U. trademark rather oddly (or this could be a loophole I accidentally discovered).

Appreciate any responses.

« Last Edit: 12-23-16 at 12:26 am by IITravel01 »
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Tobmapsatonmi

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Re: Surname Trademark questions
« Reply #1 on: 12-26-16 at 01:07 pm »

Hi.  I'm mainly a patent attorney (rather than TM attorney) so I'll just toss out some general thoughts and hopefully this might stimulate others with more info to add and/or contradict if I've got something wrong.

Take your question about taking over the "surname + word" TM of a now defunct business.  Note that in my understanding, getting a US federal registration for such a TM comes after the TM has been being used in commerce for a number of years, without other confusingly similar marks being used in similar industries, such that the user of the TM can claim that the mark has achieved something called "secondary meaning". 

You may want to google this phrase along with the word 'trademark' to get some background reading on it, but basically it means the public has come to have a relatively strong association of that name with your product, even though it started off as the relatively descriptive "surname + word".  That is, even though "surname + word" might originally be non-registrable, once it has attained secondary meaning it might be registrable.

That's good news for you generally speaking, if you wanted to start using such a mark - it can eventually become registrable assuming the right circumstances come to exist as mentioned above.

However, this doctrine probably will not help you in terms of registrability if you take over someone else's previously registered, but now-defunct mark.  The primary function of TM, and the reason society permits users to grab and claim them exclusively for their own use in their field, is that they signal to the public the source of the product or services. 

That prior company, which was the user of the mark and the source of those goods sold under the name that attained secondary meaning, is not you.  You can't claim that the public associates you as being the source of those goods.  I'm doubtful that other company's secondary meaning can be adopted by you.  (But it would still be a good question for a real TM lawyer.)

I can't answer the question about whether having the mark registered outside the US assists once you start using in the US.

But I will point out that "Hollywood Burger" claimed in their registration application that they'd been using that mark in commerce since at least 2009.  I don't know why the PTO didn't reject their apps as descriptive, but think it probably could have.
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