Do I need a trademark?

[quidomax]

What is the name of your state?Virginia

Hi all, and thank you for all of the legal advice given in other posts on this site.

I have a question: I am starting a company that is going to distribute a food product, and I want to use a brand name that includes a local landmark's name as other businesses in my area use it.

I have done a search for the trademark in the U.S. Fedral office and the name doesn't show any trademark Since it is a unique product that will separate itself by name from the other users, I don't believe using it would violate anyone else.

I am however wondering if I can and should apply for a trademark since this will be a brand name for my product? The brand name will be unique from the other users of the name, so it wouldn't be as if I were trying to keep them from using the landmarks name in their title, just not the specific brand name of my product.

Also, the product will be produced and packaged in another area and distributed here- is there any issue with doing that since the location of manufacture will be on the label?

Thanks in advance.

 

[divgradcurl]

As to whether you need a trademark or not, thats a business decision that's up to you. You can acqwuire common-law trademark rights simply by using the mark in commerce -- you don't have to register a mark with the USPTO. However, if you do apply for registration with the USPTO and they issue a registration, you have a lot more power to enforce your mark, not only locally, but nationwide. Common-law trademarks often are geographically restricted in their enforceability.

However, the more difficult question is whether or not you could even obtain a federal registration, even if you want to. Generally, marks that are "primarily geographically descriptive" are not registerable -- see Trademark Manual of Examining Procedure, section 1210.01a: http://www.uspto.gov/web/offices/tac/tmep/1200.htm#_Toc2666069

In addition, you note that the product would have the name of an area, but would be made elsewhere -- that could also be not registerqable as a " Geographically Deceptively Misdescriptive Mark" or a "Geographically Deceptive Mark" -- these two are similar, but have different tests. See the same link as above for more info.

So, you might not even qualify for a registered mark anyway -- that doesn't mean you can't still acquire common-law trademark rights, however. Further, your state may have a system for registering marks within the state -- check with your secretary of state's office to find out.

 

[quidomax]

Thanks for the info- this raises another question

As to whether you need a trademark or not, thats a business decision that's up to you. You can acqwuire common-law trademark rights simply by using the mark in commerce -- you don't have to register a mark with the USPTO. However, if you do apply for registration with the USPTO and they issue a registration, you have a lot more power to enforce your mark, not only locally, but nationwide. Common-law trademarks often are geographically restricted in their enforceability.

However, the more difficult question is whether or not you could even obtain a federal registration, even if you want to. Generally, marks that are "primarily geographically descriptive" are not registerable -- see Trademark Manual of Examining Procedure, section 1210.01a: http://www.uspto.gov/web/offices/tac/tmep/1200.htm#_Toc2666069

In addition, you note that the product would have the name of an area, but would be made elsewhere -- that could also be not registerqable as a " Geographically Deceptively Misdescriptive Mark" or a "Geographically Deceptive Mark" -- these two are similar, but have different tests. See the same link as above for more info.

So, you might not even qualify for a registered mark anyway -- that doesn't mean you can't still acquire common-law trademark rights, however. Further, your state may have a system for registering marks within the state -- check with your secretary of state's office to find out.

Thanks for the info and link. I now wonder though if I brand my product 'Goober Mountain Brand Jelly Beans' and the Jelly Beans are actually made for me and imported from another area in the state even though my business address is Goober Mountain Road, could I get into trouble just branding and marketing it that way?

Would it be better to market them as 'Blue Ridge Brand Jelly Beans' and list "Created for the Goofball County, VA Jelly Bean company in Whatever, VA"?

Sorry for additional questions, but I want to go into this with eyes wide open.

My biggest worry is that someone will say that I am misleading them into thinking the product was made on 'Goober Mountain'.

We have 'Goober Mountain Real Estate' which doesn't sell real estate on Goober Mountain and the 'Goober Mountain Country Store' which is located on 'Goober Mountain Road', but 7 or 8 miles from 'Goober Mountain'.

'Goober Mountain' is not even on 'Goober Mountain Rd' and the real estate company itself is 20 minutes from the mountain.