*Please note that while Gerben Law Firm is not located in Oregon, it can assist businesses from Oregon in registering a federal trademark because it is a federal matter.
Gerben Law Firm, PLLC is a trademark law firm that was created by trademark attorney Josh Gerben. Mr. Gerben’s trademark focused firm represents a wide range of clients all over the United States, including Portland. Gerben Law Firm’s trademark services include trademark search, trademark application, trademark registration (filing) as well as trademark renewal and trademark monitoring services.
Gerben Law Firm is focused on offering top shelf legal services at a fraction of the cost of larger firms. To do this, trademark lawyer Josh Gerben has developed a highly efficient system that allows him to work with each client individually at extremely competitive flat rates.
Portland Oregon is a unique city. Not only does it have a 24hr Church of Elvis, but it promotes “Keep Portland Weird” to encourage more businesses of this type.
So how important is it for your trademark to be as unique as the city of Portland Oregon? Well the more unique your trademark is, the broader protection you will receive under federal law.
The United States Patent and Trademark Office (USPTO) provides two registers on which your trademark can be registered. There is the Principal Register and the Supplemental Register. Trademarks which are unique make the Principal Register; trademarks which are descriptive or laudatory (terms we’ll discuss in a moment) are reserved for the Supplemental Register.
A trademark is considered unique if the words used are not readily associated with the products or services it represents. So let’s say I have a business in Portland Oregon selling banana flavored foods. If I ‘coin’ a term for my business (meaning make up a word) like “Blorge” I will definitely get on the principal register. I’ll still make the principal register if I use regular words so long as people wouldn’t regularly associate them with banana flavored foods—for instance, “Redwood”. Apple computer is really good example of a company using a common word, but making the principal register because no one before Steve Jobs associated apples and computers.
But what if I was concerned that no one in Portland would understand what I was selling if I called my banana food store “Redwood” or “Blorge”? In this case it may be more appropriate to file for a trademark like “Portland Goes Bananas” or “Let’s Get Bananas Portland” so that my potential clients would not be confused. Because, in this scenario, my company would actually be selling bananas this type of trademarks could be defined as “descriptive” and would likely be registered on the supplemental register, assuming no other company had already registered that exact phrasing.
Although the protection you’ll receive under the law won’t be as great with a supplemental register registration (you won’t have the “presumed national ownership” you get with a principally registered mark) you would still have a great deterrent and anyone attempting to register a mark of the same name would most likely be denied by the government.
So while sometimes having a trademark as unique as the city of Portland Oregon is a great way to ensure full protection under the law, it may also make sense for marketing purposes to be slightly more descriptive with your trademark.