Monday, January 12, 2009

Acquiring Geographic Trademark Rights

Hey Rich: I have a question. I just moved to California from Arizona and notice lots of decals on cars that say NOR CAL -- NOR CAL with a star or other object in between NOR and CAL. Can you trademark NOR CAL? Would you have to trademark every design with NOR CAL? I'm so glad you asked. The short answers to your questions are "Yes," and "No." However, we will need to qualify these answers (and segue into the "long answer"): (1) As has been pointed out to the Dear Rich staff, "trademark" is not a verb. You cannot trademark anything; you can only acquire and assert trademark rights. (2) You can only acquire trademark rights if you are the first to use a mark in connection with the goods or services in commerce. So if someone is already using the mark in connection with goods or services, you're probably out of luck.
The first step for anyone who wants to register a trademark is to check the USPTO site (click "Trademarks," then "Search TM database"). For example, if you searched for "NOR CAL," "NORCAL" and "NOR*CAL," you will find there are over 20 registered trademarks for goods and services such as building materials, real estate listings, spring water, recycling services, insurance services, tennis goods, decals, t-shirts (see above), and snowboards. In general, under trademark law you can stop someone from using a confusingly similar trademark. So, for example, if you acquired NOR CAL for one product, you could prohibit someone from using NORCAL or NOR*CAL on similar goods. Your challenge in registering NOR CAL is to find goods or services that are not currently sold under a NOR CAL trademark.
One other wrinkle: Since NOR CAL is a designation for Northern California, you would also want to be sure to follow the rules for trademarks that serve as geographic indications -- in particular, you don't want to imply that your goods come from Northern California if they don't.