Thursday, January 18, 2007


Yes, you heard that right ! The arctic jet stream has resulted in snow falling in Malibu ! Malibu Snow: get it while its hot, er, cold ! Enough for a good old fashioned snowball fight. If you are interested in snowboarding or skiing, however, it will still be necessary to travel to points farther north in the Sierras or locally in the San Bernardino Mountains.

The irony, of course, is that when one thinks of Malibu the first word one thinks of is not 'snow'. Sun or bikini or waves or surf would come to mind to be sure. MALIBU thus has suggestive significance. In terms of trademark law, this can be advantageous. On the other hand, MALIBU, also has geographic significance which can be disadvantageous to a trademark owner and is an issue worth analyzing before adoption and attempts to register a trademark.

Some examples of MALIBU trademarks that have been registered with the U.S. Patent and Trademark Office (USPTO) :

Malibu Comics, for a series of comic books;

Malibu Glitz, for cosmetics;

Malibu, for boats;

True Malibu, for perfume;

Malibu, for clothing;

Malibu, for insect repellant.

In each of the above-enumerated uses and registrations of MALIBU, the marks and their goods and/or services are not geographically descriptive. That is, Malibu is used 'fancifully' in connection with both distilled spirits and comic books.
Since Malibu is not geographically identifiable with comic books or distilled spirits, these marks are registrable. On the other hand, were someone to try to register MALIBU SUNTAN for a retail sun tanning salon located in Malibu, they would likely face several objections from the USPTO, namely, (a) refusal as geographically descriptive; and (b) merely descriptive of the services to be provided.

And so the nagging question you may be asking yourself now is: Is MALIBU SNOW registrable as a trademark or service mark? The answer, of course, depends on the goods and/or services being provided. How about for 'retail ice cream store services' ? In my opinion, MALIBU SNOW, is registrable for an ice cream store. Whether it can be registered, in fact, will also depend on its similarity to any other pending or registered marks. Theoretically speaking, however, MALIBU SNOW should not be refused registration as being geographically descriptive.

With all of this talk about trademarks and registrability, it is clear that this is no time for the timid or is such an undertaking merely a day at the beach.
When considering the adoption and use and registration of a trademark it is well advised to contact and hire a trademark attorney to help you wade through the inshore holes and surf, not to mention, snow that you may encounter in Malibu or Mammoth for that matter.

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