Registration Denied

[saddlemaker]

What is the name of your state (only U.S. law)? Texas

Here is my hypothetical situation. I own a company that makes saddles. I have a couple brands.

One of the brands is a saddle done in a particular style of decoration, not construction. I chose to name this brand after a long dead saddle maker who sort of pioneered this style of saddle. This person sold their own saddles through a brand name of their own, not under their own name.

The market however would refer to that saddle maker's saddles as "smith saddles or Andy Smith saddles" instead of AES Saddles (names made up for examples) where AES Saddles was the actual brand used in advertisements and imprinted on the saddles.

I chose to use a brand called A.Smith Saddles for my work done in the same style as the old AES saddles. In all the years I have used this brand there has never been even one instance where a customer has been confused and thought that A.Smith saddles were the same as AES Saddles.

Anyway, the trademark is establish in common law and in use nationwide. I applied and was denied because of my own marketing where I clearly state that this brand is done in tribute to the style pioneered by Andy Smith of AES Saddles. The trademark office used my own website content against me to deny me.

Specifically, they said that using A.Smith as a trademark could confuse the buyer as to the source. They said that Andy Smith was a famous name and therefore protected. Even though the exact opposite was true and Andy Smith was NOT famous before I chose to promote the formerly obscure maker with my new brand.

I figured that since I am using the brand and the office denied the federal registration that I could just keep going with a TM and not worry about anyone else trying to register my brand.

My question is does the rejection in any way affect my trademark in common law and if someone else, such as a foreign company tries to sell saddles bearing my trademark can I still sue them for infringement?

And the followup question, is it worth it to try and argue this before the trademark office to get the brand registered or is that futile?

 

[quincy]

What is the name of your state (only U.S. law)? Texas

Here is my hypothetical situation. I own a company that makes saddles. I have a couple brands.

One of the brands is a saddle done in a particular style of decoration, not construction. I chose to name this brand after a long dead saddle maker who sort of pioneered this style of saddle. This person sold their own saddles through a brand name of their own, not under their own name.

The market however would refer to that saddle maker's saddles as "smith saddles or Andy Smith saddles" instead of AES Saddles (names made up for examples) where AES Saddles was the actual brand used in advertisements and imprinted on the saddles.

I chose to use a brand called A.Smith Saddles for my work done in the same style as the old AES saddles. In all the years I have used this brand there has never been even one instance where a customer has been confused and thought that A.Smith saddles were the same as AES Saddles.

Anyway, the trademark is establish in common law and in use nationwide. I applied and was denied because of my own marketing where I clearly state that this brand is done in tribute to the style pioneered by Andy Smith of AES Saddles. The trademark office used my own website content against me to deny me.

Specifically, they said that using A.Smith as a trademark could confuse the buyer as to the source. They said that Andy Smith was a famous name and therefore protected. Even though the exact opposite was true and Andy Smith was NOT famous before I chose to promote the formerly obscure maker with my new brand.

I figured that since I am using the brand and the office denied the federal registration that I could just keep going with a TM and not worry about anyone else trying to register my brand.

My question is does the rejection in any way affect my trademark in common law and if someone else, such as a foreign company tries to sell saddles bearing my trademark can I still sue them for infringement?

And the followup question, is it worth it to try and argue this before the trademark office to get the brand registered or is that futile?

The trademark registration rejection does not necessarily affect your ability to sue any competitor who tries to market their own saddles in the U.S. using the same or similar A.Smith Saddles trademark (see the Lanham Act's Section 43a) - although you are, apparently, vulnerable to an infringement suit filed by AES or Andy Smith if these marks have been in use longer than yours and/or are registered.

That said, trademark rights in this country arise from the use of the trademark in commerce and not from the registration of the mark. Registration of a trademark is not necessary - although federal registration comes with the presumption of ownership in the mark and provides other benefits.

If your trademark was rejected for placement on the Principal Register, you should apply for registration on the Supplemental Register. In addition, if you have not registered A.Smith Saddles with your state, this you should do. State registration is possible even when your mark is not registered federally.

If a competitor from another country has registered A.Smith Saddles in his/her country, that can give the competitor ownership rights to the name there. You could not in that case market your saddles in that country under the A.Smith Saddles name without infringing on the competitor's trademark rights. You could not, in other words, challenge the competitor's use of the same name in their own country if they have registered the name. Likewise, the A.Smith Saddles from the other country would have to market their saddles under a different name in the U.S. to avoid unfair competition claims in this country.

Because your registration of A.Smith Saddles was denied in this country, any foreign competitor who tried to register the name here would (likely) be denied as well, on the same basis (consumer confusion).

All of this is a lot more involved, and there is a lot more to consider, and it is far more complicated than what I have mentioned here. I recommend you sit down with a trademark attorney in your area for a personal review of the real names of the trademarks involved and a review of the real competitors in the market that would likely challenge or could reasonably challenge your use of the name and its registration.

Good luck.

 

[single317dad]

I think the rejection and its basis are sound. I believe that the name does in fact serve to confuse consumers, whether or not you've heard any reports to that effect.

While names like Les Paul and Carroll Shelby were used by those people (and the brands they partnered with), others were known people who worked behind a brand their whole lives. Imagine marketing a Steve Jobs phone or a Sam Walton thrift store. The intention would likely be to lead the consumer to believe that those parties either created or endorsed the products. While you may be able to defend those "tribute" products (despite the onslaught of lawsuits that would surely come), that doesn't mean USPTO would grant you a trademark registration.

All of this reminds me I need to get back to work on my W. Houston microphone prototype.

 

[quincy]

The trademark examiners do not make a mistake often.

That said, if saddlemaker can show that his A.Smith Saddles mark has become connected in consumers' minds with saddles (more so than Andy Smith or AES) - perhaps through his continual use of the mark in commerce, through his advertising with the mark, through the sales of his saddles, through consumer polls that indicate this connection - he could still get federal registration for the name. It would be no different than a small hamburger joint named McDonald's being surpassed by THE McDonald's in the marketplace and in the minds of consumers. Both McDonald's would have been considered weak marks originally but THE McDonald's acquired a secondary meaning, entitling it to federal trademark protection.

All IP issues are decided case-by-case. There is rarely an easy answer, especially when dealing with hypotheticals.

 

[saddlemaker]

Thank you.

I understand all sides. I guess I am still a bit confused as to the level of "fame" required before one is allowed to use any part of a dead person's name.

I think that if a person wasn't famous before but I made them famous then shouldn't I have the right to promote that?

At the end of the day, probably not the best idea although it was rooted in a desire to insure that this saddle maker got the credit I felt he deserved and was intended to "protect" his name from being appropriated by unscrupulous competitors after I began to market this style.

My prevailing thought was that if I simply had a non-connecting brand name but still used the story of the style's provenance then an unscrupulous foreign competitor known for gobbling up brands would simply make a copy and then take the name anyway.

Well, I see that I need to consider an attorney and look into the supplemental register.

Thanks for the help. This site is a wonderful resource.

 

[saddlemaker]

Also

AES Saddles as a trademark ceased use in 1994. After that point no more saddles were sold under that brand and Andy Smith Saddles is merely the name used by those who buy and sell old saddles instead of the actual mark.

Andy Smith was virtually forgotten and almost no buyer of modern new saddles even knew or knows of his existence.

Again thanks.

 

[quincy]

I understand all sides. I guess I am still a bit confused as to the level of "fame" required before one is allowed to use any part of a dead person's name.

I think that if a person wasn't famous before but I made them famous then shouldn't I have the right to promote that?

At the end of the day, probably not the best idea although it was rooted in a desire to insure that this saddle maker got the credit I felt he deserved and was intended to "protect" his name from being appropriated by unscrupulous competitors after I began to market this style.

My prevailing thought was that if I simply had a non-connecting brand name but still used the story of the style's provenance then an unscrupulous foreign competitor known for gobbling up brands would simply make a copy and then take the name anyway.

Well, I see that I need to consider an attorney and look into the supplemental register.

Thanks for the help. This site is a wonderful resource.

There can be publicity rights attached to a person's name so that any use of the name can be an infringement on those rights - this even when the person is dead. An estate can own the rights to all things connected with the person.

Even if you or someone else were to "make" a person famous by writing about them, you do not acquire the rights that inherently belong to that person. For example, I cannot write about you and then claim rights to your name or image.

I think consulting with an attorney, so the attorney can personally review all facts, is smart, and I think applying for placement on the supplemental registry is smart.

Whenever you plan to invest, or have invested, a lot of time and money into a venture, it can be important to identify and then reduce or eliminate any areas of legal risk that could jeopardize that investment.

Good luck, saddlemaker.


(edit to add: I thought you were using hypothetical examples and not the real trademarks. That said, if AES saddles are still in existence or are still being sold with the AES mark, the trademark can still be offered protection under the law - just like Ford Motor Company's Edsel )

 

[saddlemaker]

One last question that I forgot, for which I have found no answer through search.

Can a nickname for a product become a defacto trademark? So for example say that the brand was something fanciful like Sytunder Saddles but everyone in the business called them by the maker's name Jacobs Saddles instead of the actual mark?

Is it possible then for Jacobs Saddles to be considered to be a common law mark even if the Mr. Jacobs himself never used that to describe his own work but everyone else did?

 

[saddlemaker]

There can be publicity rights attached to a person's name so that any use of the name can be an infringement on those rights - this even when the person is dead. An estate can own the rights to all things connected with the person.

Even if you or someone else were to "make" a person famous by writing about them, you do not acquire the rights that inherently belong to that person. For example, I cannot write about you and then claim rights to your name or image.

I think consulting with an attorney, so the attorney can personally review all facts, is smart, and I think applying for placement on the supplemental registry is smart.

Whenever you plan to invest, or have invested, a lot of time and money into a venture, it can be important to identify and then reduce or eliminate any areas of legal risk that could jeopardize that investment.

Good luck, saddlemaker.


(edit to add: I thought you were using hypothetical examples and not the real trademarks. That said, if AES saddles are still in existence or are still being sold with the AES mark, the trademark can still be offered protection under the law - just like Ford Motor Company's Edsel )

Not using real trademarks. AES is a made up name to describe a possible real-world situation that I can't discuss using the real marks.

AES Saddles ceased to exist in 1994. No further new saddles were made under that brand since then. I introduced A.Smith Saddles as a brand in 2008. Registration was denied in 2009. The brand A.Smith saddles however continues to this day.

 

[quincy]

Can a nickname for a product become a defacto trademark? So for example say that the brand was something fanciful like Sytunder Saddles but everyone in the business called them by the maker's name Jacobs Saddles instead of the actual mark?

Is it possible then for Jacobs Saddles to be considered to be a common law mark even if the Mr. Jacobs himself never used that to describe his own work but everyone else did?

Yes, that is possible.

Mickey D's has become synonymous with McDonald's, at least in some parts of the country, so someone could probably not use Mickey D's to identify their fast food restaurant without a trademark challenge from McDonald's.

Nicknames can become identifiers of a business, product or service, just as slogans and short phrases can. The purpose of trademarks is to identify and distinguish one business or product or service from all others and these can all do that. These can also be registered with the trademark office but, like trademarked names, registration is not necessary to acquire rights.

Thanks, by the way, for clarifying that the names being used are not the real trademarks. That had originally been my understanding.

 

[saddlemaker]

Some followup.

Met with an attorney. He feels that we have a solid case. Although not needed we are obtaining a letter from the Smith family saying that they have no problem with the new brand.

He feels that the new brand is now firmly established on its own with six years of continuous use and no consumer complaints of confusion and that there is a pretty good chance to register it.

Thank you again for the advice.

 

[quincy]

Met with an attorney. He feels that we have a solid case. Although not needed we are obtaining a letter from the Smith family saying that they have no problem with the new brand.

He feels that the new brand is now firmly established on its own with six years of continuous use and no consumer complaints of confusion and that there is a pretty good chance to register it.

Thank you again for the advice.

That sounds encouraging.

My understanding from your first postings was that your trademark registration rejection was a recent one. The length of time that your mark has been in use can make it eligible for placement on the Principal Register, even when it was not eligible on first application when first used in commerce.

That said, I think the letter from the Smith family will be nice to have, as marks approved for placement on the Principal Register cannot generally include the names of living persons without their consent OR words that could disparage a person either living or dead (not that your mark does either) OR surnames.

Obviously there are exceptions - and these exceptions will generally be for those trademarks that have gained distinction over time (a secondary meaning), like the previously used example of McDonald's and like (apparently and according to the attorney you saw) your own trademark.

Good luck, and thanks for the thanks.