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  • QA 011
    Question:
    Can one register a district (or area name) as a Trademark or a Collective Mark in the United States? At what cost and how?
    Background:
    Follow-up question to QA 009. Thank you for responding to our question regarding the possibilities of trade marking our district name for our coffee. Our follow-up question is: can you give details of the position in the United States specialty market? Procedures, costs? How would we find someone to assist us?
    Asked by:
    A grower cooperative in Tanzania
     
    Answer:

    There are geographic or regional trademarks registered with the U.S. Patent and Trademark Office, and the option of filing for such registrations exist.  However, it has become more complex and the Trademark Office is more hesitant to issue regional marks.  The main reason is an obvious one, how can an applicant for a geographical trademark claim to represent all potential interested parties from a region or area?  the applicant cannot own a region, so there is an assumption that it would be unfair and unreasonable to grant one a trademark when many could be in similar position. The answer to overcoming this problem has been to get official sanctioned approval from some type of governmental or semi-governmental body from the target geographical area or region. That is the better approach but of course it requires cooperation and participation from the region involved, etc.

    Industry sources suggest that rather than a strictly geographic regional mark, the use of a graphic logo can be an approach for achieving the same result.  Such a logo would refer to the area/region, and would be used by many in that region according to specified requirements.

    Rather than a geographic "word mark" which is simply the region involved, the trademark is filed as a "collective mark" for goods from that region, from members of the region.  A cooperative, a governmental agency, or some type of grower organization would own the mark, but it would be used by members of the cooperative/organization.

    Costs are all dependent on what is being filed for registration, and the complexity of the application.  Many trademarks can be registered for as little as US2,000.00 to $3,000.00 if no difficult issues arise, if there is no opposition from other interested parties, etc.  And this is not always the case....   It will take at least one year from filing an application to obtaining registration in general, and that is if there are no complexities. However, the filing of an application does begin the intellectual property protection of a trademark even though it is still going through the registration process.

    A complex trademark application, or a trademark for a geographic region, district or area will cost at least US$ 3,000.00. But it could cost much more. This will depend on the situation, whether the application is opposed or not, how organized the applicant area participants are, etc.   One should probably budget US$ 5,000.00 to 7,500.00 for research into the availability of the target geographic trademark, the application fee, and the legal fees themselves. But this would be for a relatively uncomplicated application.  Again, costs may change depending on the approach of the U.S. Trademark Office and any possible opposition by other interests.

    The process can go smoothly or it can be difficult.  The application may even be rejected in total by the Trademark Office due to unwillingness to afford legal rights to a region to one party that may not necessarily represent the interests of others in that region.

    It is possible to make trade mark searches and to lodge applications direct at www.uspto.gov/main/trademarks.htm For relatively simple marks this would be a much cheaper option, especially if for example a business relation in the US were willing to assist. Alternatively, the Specialty Coffee Association of America (www.scaa.org) may be able to guide a coffee producing area with the registration of a geographic mark or a collective trademark, in the philosophy of consumer awareness and honesty in labeling of origin of products.

    As a first step interested parties may call the SCAA at (562) 624-4100, telefax (562) 624.4101, and ask for Stuart Adelson, corporate attorney, or they can email him direct at stuadelson@comcast.net.

    Posted 20 January 2005

    Related chapter(s):
    Related Q & A:
    QA 009