The Austin-based Torchy’s Tacos, famous for its “Damn Good Tacos” has initiated a legal action (a trademark lawsuit) against a Colorado company over its name, “Dam Good Tacos.”
Torchy’s parent company, Success Foods Management Group LLC, is seeking monetary compensation from the Colorado Company’s parent company, Dam Good Systems LLC. Success Foods also wants Dam Good Systems to switch control ownership of its social media and internet accounts to Success Foods Management.
This case highlights the importance that the words a company chooses to register as a trademark can significantly influence potential legal actions that might be taken against the company.
How the Trademark Office Reviews Cases
When an individual applies for a verbal trademark like “Dam Good Tacos”, an examiner at the Patent and Trademark Office will determine whether a mark is “inherently distinctive of source” which will prevent customers from becoming confused about similarly named products. Determining the “distinctive” element of a word depends on a measuring test that includes several categories:
- Generic. These marks cannot be registered. Sometimes, however, individuals still decide to assign a product a generic name without being afforded trademark protection.
- Descriptive and Suggestive. These types of marks qualify for protection but there is not a high enough level of distinctiveness for the mark to be viewed as arbitrary or fanciful. Marks that are considered descriptive must obtain “secondary meaning”, which means that the mark must become so popular that consumers associate that description with one source. In the previous example, “Dam Good Tacos” is likely to be considered a descriptive or suggestive trademark.
- Arbitrary or fanciful. These marks are easily registered and protected but have no connection with the product that is sold.
Lastly, it should be noted that over time trademarks can switch between categories. In the event that there are competing marks, individuals must remember that the party that first registers that mark will have legal priority to useof that trademark.
Advice on Selecting a Trademark
There are several pieces of advice that individuals should follow when determining a name to trademark, which include the following:
- Make Sure Your Trademark Reaches An Acceptable Level. Decide on a name that is arbitrary, fanciful, or suggestive.
- Perform Competitor Research. Research competitors in the area who might already be using a mark that is close to your planned name. Individuals are recommended to use both Google and the Trademark Electronic Search System (TESS), a database of all currently registered trademarks.
- Consult with An Attorney. If confused about whether a certain name is a wise idea, do not hesitate to consult with an experienced trademark attorney who can inform you about such matters.
The Importance of a Seasoned Trademark Attorney
If you need help on deciding how to register a trademark, a trademark lawsuit or assistance with a trademark in any way, one of the best first steps is to retain the services of a knowledgeable trademark attorney. At the law firm of Whitcomb, Selinsky, McAuliffe, PC, our attorneys are very familiar with the various issues that can arise concerning trademarks.
Contact our firm today by completing our online form or calling our Denver office at (303) 534-1958.