Salt Lake City, UT (PRWEB) January 13, 2013
Can you point to Tinseltown on the map? It might be hard to do unless you have one of those touristy “Homes of the Stars” maps. While you won’t find Tinseltown on any traditional map, it’s still likely that you associate the name with a specific town in Southern California - Hollywood. Topson Downs, a clothing company, wanted to base their brand on this association, but not so much the association with the physical location of Tinseltown, but more about the concept of Tinseltown - glitz, glamour and star power.
They applied for a trademark registration on the term Tinseltown in the class of clothing, but received a rejection from the trademark examiner stating that Tinseltown is primarily geographically descriptive. In other words, the examiner rejected the application because, according to the examiner, Tinseltown is an actual place and one company shouldn’t be allowed exclusivity over the name of the place. The idea being that other clothes manufactures in the Tinseltown area need to be able to use a geographic term to describe where their goods/services are from and that one business with a trademark registration should not be able to prevent them from using the name. But if there is no such place called Tinseltown, how can there be other Tinseltown manufacturers that would be prevented from using the name?
Topson Downs appealed this ruling to the U.S. Trademark Trial and Appeal Board, claiming that there is no such place as Tinseltown and that even if there is, the term’s primary meaning is not to indicate geography. Their trademark lawyers argued that the primary meaning of Tinseltown denotes the movie industry itself and not the physical location of Hollywood. Topson Downs provided evidence showing that, while Tinseltown can refer to the city of Hollywood, it is commonly used to refer to the fashion and glamour of movie production and the red carpet we see so often on television. This argument put forth by Topson Downs’ trademark lawyers was persuasive enough that the U.S. Trademark Trial and Appeal Board overturned the trademark examiner’s rejection and the Tinseltown mark will be allowed for trademark registration.
This case highlights the challenging issues that can arise during prosecution of a trademark application. An examiner may initially refuse trademark registration, but the refusal may be overcome by skillful argument prepared by an experienced trademark lawyer. Good lawyering can be the difference between a business securing or losing its brand investment.