Federal and state law govern intellectual property issues your business may have.  If you have come up with an invention, then you may well wish to apply for a federal patent to protect your invention from being copied.  You apply for patent protection with the federal government.  The federal and state government both provide protection for trademarks, which are your company name and logos.  However, it is the well-settled law that registering a name with the Minnesota Secretary of State does not confer a right of legal protection of that name.

Whether a business acquires a protectable trademark depends on the nature of the mark it adopts.  Imported Auto Parts Corp. v. R B Shaller & Sons, 258 N.W.2d 797 (Minn 1977).  If the business selects a mark that is arbitrary with respect to its trade or merely suggestive of it, the business’ first use of the mark will establish common law rights, if another has not yet appropriated it.  Id.  This is sometimes referred to as the “first use” doctrine.  This legal principal goes back in Minnesota to at least 1920 where, in the case of Citizens Wholesale Supply Co. v. Golden Rule, 147 Minn. 248, 180 N.W. 95 (1920), the Minnesota Supreme Court held that the right to a trademark or trade name is determined by priority of adoption and use.  Registration of a trademark does not in itself confer any greater rights to use such a mark as existed at common law, since it is but a method of recording for the purpose of serving notice of claims of ownership and informing the public and dealers of such name.  Venn v. Goedert, 206 F. Supp. 361 (D. Minn. 1962); B.B. Pen Co v. Brown & Bigelow, 92 Fed Supp 272 (D. Minn. 1950) aff’d 191 F2d 939 (8th Cir 1951), cert. Denied 343 U.S. 920 (1952).  The registration of trademarks confers nothing more than a procedural advantage without enlarging the registrants substantive rights.  Mass & Waldstein Co. v. American Paint Corp. 288 F 2d 306 (8th cir. 1961). 

Importantly  the Minnesota Supreme Court stated in Imported Auto Parts Corp., that when a trade name is generic, its use must not rise to the level of unfair competition.  The Court stated:

“Nevertheless, the doctrine of unfair competition requires that subsequent use of the term be fair. Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 122, 59 S. Ct. 109, 115, 83 L. Ed. 73, 80 (1938).  Defendants have taken every reasonable precaution in distinguishing the name of their business from that of plaintiff’s. Wherever the business’ name appears, defendants have prefaced the generic term with the personal name “Rossi,” which, because of its size and the inscribed letter “o,” is more prominent than the rest of the name. Further, defendants never separate these components of the name to hold themselves out only as “Imported Auto Parts.” The district court noted:
“The use of the word ‘Rossi’ as used by the defendants along with the words ‘imported auto parts’ is sufficiently striking in appearance and effect so as to distinguish defendant’s name from that of the plaintiff and so as to allow the purchasing public to identify the source of the merchandise sold by the parties. It is clear to the Court that to the extent any confusion may result from the defendant’s use of the tradename ‘Rossi Imported Auto Parts,’ such confusion, if any, is unavoidable under the circumstances * *


Outdoor 3

Contact Attorney Kenneth M. Wasche for Free Initial Consultation

Consultation can be scheduled on-site at Attorney Kenneth M. Wasche Twin Cities’ office or off-site as necessary.

To schedule a free consultation with a Minnesota Lawyer call 763-280-5100.