How to prove to PTO your Trademark has secondary meaning before any sales are made?

[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?

 

[FlyingRon]

Registration need not precede use in commerce nor establishment of trademark rights.

 

[4lane]

Ok, thank you! But then how do you prove secondary meaning if there is no way to prove that the public identifies your name with the product, rather than the name of a person who has the same name? For example, you trademark the name "Allen Furstor" for your business that makes T-shirts, but the PTO denies your trademark unless you can prove that customers identify "Allen Furstor" with the T-shirt line, as opposed to a person named "Allen Furstor"?

 

[divgradcurl]

Ok, thank you! But then how do you prove secondary meaning if there is no way to prove that the public identifies your name with the product, rather than the name of a person who has the same name? For example, you trademark the name "Allen Furstor" for your business that makes T-shirts, but the PTO denies your trademark unless you can prove that customers identify "Allen Furstor" with the T-shirt line, as opposed to a person named "Allen Furstor"?

The general rule is, you can't. The most typical way of showing secondary meaning is simply using the mark in commerce for 5 years. You can read about the various ways to show secondary meaning here: US TMEP 2009 Chapter 1200, but it's going to be hard, or impossible, to prove without any use of the mark in commerce.

 

[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.

 

[divgradcurl]

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.

I don't know anything about your application, other than what you've written here. That said, first thing to do is to ask your examiner what he or she would find to be acceptable evidence of secondary meaning -- the examiners are allowed to answer those sorts of questions. Maybe there is some evidence in your particular circumstance that would convince your examiner. That's the first step.

If the examiner says "evidence of five years use in commerce," then you will likely need to follow choice 1. There is no requirement for secondary meaning to be included on the secondary register. You can refile for a registration after you have built up sufficient evidence of secondary meaning.

Choices 2 and 3 likely won't work, because the requirement is to show the evidence within 6 or 12 months, which may be insufficient time to prove up the secondary meaning. Again, check with your examiner for guidance here, but most likely choice 1 will be the way you end up going.

 

[4lane]

I haven't submitted an application yet - I'm about to and am therefore wondering which direction to take. I don't have an assigned examiner who could answer these questions.

 

[divgradcurl]

I haven't submitted an application yet - I'm about to and am therefore wondering which direction to take. I don't have an assigned examiner who could answer these questions.

Then most likely you will want to file on the supplemental register, until you obtain sufficient evidence to support a registration on the primary register. Filing on the primary register now will likely just net you a rejection, and cost more than simply filing on the supplemental register to being with.

 

[4lane]

The product is in the final phase of development, will be sold to wholesalers in the Fall, and on retail shelves in the spring.

Instead of a Supplemental, I could submit a 1(b) Intent to Use, which seems to be the best route at this point, no? I will be able to show proof of commerce in 6-12mons and could always extend if needed.

 

[divgradcurl]

The product is in the final phase of development, will be sold to wholesalers in the Fall, and on retail shelves in the spring.

Instead of a Supplemental, I could submit a 1(b) Intent to Use, which seems to be the best route at this point, no? I will be able to show proof of commerce in 6-12mons and could always extend if needed.

You could, but you are unlikely to be able to keep extending for the 5 years it might take to establish secondary meaning. Typically you submit an intent to use when you have a mark that is registerable -- you don't have a registerable mark without the evidence of secondary meaning.

But you can always try and go this route, there is no harm other than the fees involved if you were to get your mark rejected.

 

[4lane]

You could, but you are unlikely to be able to keep extending for the 5 years it might take to establish secondary meaning. Typically you submit an intent to use when you have a mark that is registerable -- you don't have a registerable mark without the evidence of secondary meaning.

But you can always try and go this route, there is no harm other than the fees involved if you were to get your mark rejected.

Right. 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!

 

[divgradcurl]

Right. 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!

I refer your back to the Trademark Manual of Examining Procedure: US TMEP 2009 Chapter 1200