Clarification on South Dakota Trademark Law

Clarification on South Dakota Trademark Law

FOR IMMEDIATE RELEASE
November 28, 2011

FOR ADDITIONAL INFORMATION
Contact: Jason M. Gant (605) 773-3537

What’s in a name? Secretary of State Jason Gant reminds trademark applicants that names and cities cannot be trademarked for exclusive use under South Dakota Law.

Secretary of State Jason Gant noted today that the public should be aware that South Dakota Law places certain restrictions on trademarks, and those seeking to trademark their name for exclusive use need not apply.

“South Dakota law does not allow persons to simply trademark a name or a location to deny its use to others. Any trademark registration with a name or location can only be used in connection with additionally descriptive terms distinctive of the applicant’s goods or services,” Gant said. “In other words, I couldn’t trademark the name “Jason Gant” in South Dakota, but I could trademark “Jason Gant Widgets.”

“The same goes for geographically descriptive terms such as “Black Hills,” or “Spearfish.” In the past, based on state law, our office has denied such requests based on SDCL 37-6-10,” Gant said.

“The key for trademark applicants is that the requirement for a trademark is that a term’s use must be distinctive. You can protect the identity and distinctiveness of your product, but you can’t deny someone the use of their name, just because they might have the same name.“

Mike Rowe (Photo credit: Hell's Kitchen)

Controversies over protecting names have arisen recently due to a group in Sturgis filing for federal trademark protection for “Sturgis,” and “Black Hills” and a state prison inmate suing actor Mike Rowe because they share the same name. Gant noted, “In the case of trademarking “Sturgis” and “Black Hills,” this only could have taken place at the federal level, because my office has and will continue to reject similar applications, based on 37-6-10. Unfortunately, the parties involved are left to fight that battle in federal court.”

“In the case of South Dakota’s Mike Rowe bringing suit against Mike Rowe, the narrator of The Deadliest Catch, for virtue of having the same name, everyone has their right to have their day in court. However, anyone attempting to trademark a personal name for their own exclusive use would find their application rejected in South Dakota.”

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