Trademarking the Name of a Town

[planoguy]

Ok. There is Plano Texas. And there is Plano Illinois which is where Plano Tackle Boxes are actually made. Plano Molding the company which makes the boxes has a trademark on the name Plano. Does that mean if I own a bike shop in Plano I can't call it Plano Bike Repair? Is everything with the word Plano in it an infringement? Seems like they were able to copyright a broad area. Or does it just cover things in their area of interest. So I can't own Plano Tackle or Plano Bait and Tackle shop in any town named Plano?

[LawResearcherMissy]

Plano Molding's trademark on the word Plano extends to their distinctive logo and the use of Plano(R) as their business name.

If you live in Plano, TX or Plano, IL, and the full name of your business is Plano Bike Repair or Plano Bait and Tackle, you're fine.

[Dr.Sam]

In general Placename + Type of Service is too descriptive to qualify for trademark. Section 2(e)(2) of the Trademark Act, 15 U.S.C. §1052(e)(2) There are exceptions where the business has succeeded in creating an association with their specific business, not an easy threshold to meet. Research and compare section f.

In most (not all) cases trademark is product class specific, so that "Life" cereal does not infringe on "Life" magazine. Except in the case of "famous" marks the criteria is the potential for confusion by the viewer as to the source of the product or service. Plano Bait and Tackle is quite possibly too close to a Plano Tackle box to survive a challenge, while Plano Bakery would very likely not be.

Ultimately the question is answered in court. If I had a Bait and Tackle shop I would not attach the name "Plano" to it, the risk may exceed the benefit. If I had a Bakery I might, unless my research showed Plano Molding to be litigious. My best choice of business name, however, would be more distinctive and more readily trademarked than City+Service.