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Geographic Locations - College Location Trademarks Sect 1210.02

"Edison State College" in Ft. Myers, Florida intends to change its name to "Florida Southwestern State College" because of a fear (unfounded) that "Thomas Edison State College" of Trenton NJ might file a trademark infringement lawsuit due to its federally registered trademark. I believe that "laches" would prevent such a lawsuit since Thomas Edison State College obtained its trademark registration in 2003 and it knew about Edison State College in Ft. Myers, Florida, but nevertheless Edison State College has now dropped its application for trademark registration. Since Edison State College's new name will be "Florida Southwestern State College" I am interested in finding out what others think about the registerability of the new name.

 

I believe that Section 1210.02, Primarily Geographic Significance" would prevent registration on the Primary Trademark Register, however it could be registered on the Secondary Trademark Register. "Florida" is clearly a primary geographic location and "Southwestern" clearly describes that part of Florida where the College is located (Ft. Myers). "State" and "College" definitely must be disclaimed.

 

Moreover, the President of Edison State College has said that he wants the college's new name to reflect where it is located. Is Edison State College jumping out of the frying pan into the fire? Especially since "Washington University" in Missouri and "George Washington University" in D.C. have registered trademarks for "educational services" in International Class 041 and an application to register "Thomas Edison State University" was determined to be allowable over "Edison University" both of which concern a last name only vs. a first and last name of a famous person. How can one be sure that the Trademark Examining Attorney will consider the "geographical location" issue as a basis for rejection?

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Idea No. 93