Legal Opinion

I understand the new Town of Ocean City ("TOC") ambulance bears the name and mark OCEAN CITY FIRE RESCUE on the side. From the Town of Ocean City, Maryland, Emergency Services, Fire-EMS web site, I see that older ambulances had OCEAN CITY PARAMEDIC RESCUE on the side.

As you know, Ocean City Fire Rescue, Inc. ("OCFR") owns an allowed application to register the mark OCEAN CITY FIRE RESCUE for the following goods. The application is based on OCFR's intent to use the mark in commerce (i.e. an ITU application):

Dress shirts; Golf shirts; Hats; Jogging pants; Knit shirts; Night shirts; Open-necked shirts; Pants; Polo shirts; Shirt fronts; Shirt yokes; Shirts; Shirts for suits; Short-sleeved or long-sleeved t-shirts; Short-sleeved shirts; Sleep shirts; Small hats; Sport shirts; Sports shirts; Sports shirts with short sleeves; Sweat pants; Sweat shirts; T-shirts; Toboggan hats, pants and caps; Waterproof jackets and pants; Wind shirts

Once evidence of use of the mark is filed in OCFR's application and it matures to registration, the federal registration will provide nationwide protection for the goods covered by the application. Even now, while the application is still pending, any third-party user is deemed to have constructive notice of OCFR's rights in the mark (which still must be perfected by filing evidence of use) simply because of the pending federal application. However, the rights discussed above are limited to the goods or services covered by the application. In the case of OCFR's mark, that is the clothing goods listed above.

By placing the mark on its ambulance, it is safe to say that TOC is using the name and mark OCEAN CITY FIRE RESCUE for ambulance, paramedic and rescue services in general. Because the goods of OCFR's application differ from the services of TOC, it is unlikely that you would be able to successfully rely on OCFR's pending federal application to object to TOC's current use of OCEAN CITY FIRE RESCUE.

However, apart from federal rights which will be conferred once the registration issues, OCFR may have common law rights in the mark OCEAN CITY FIRE RESCUE for services pertaining to fundraising for firefighter training. Common law rights are rights in a trademark or service mark based on your use of the mark in commerce without registration. As compared to federal rights which are national in scope, common law rights are geographically limited in scope to the area in which you use the mark. For example, assuming OCFR uses the mark OCEAN CITY FIRE RESCUE locally for fundraising for firefighter training, OCFR's rights may be limited to the Eastern Shore of Maryland. In the case of the mark OCEAN CITY FIRE RESCUE, OCFR's common law rights are limited in another way as well. The mark OCEAN CITY FIRE RESCUE has descriptive characteristics in that OCEAN CITY identifies the geographic location in which OCFR's services are rendered and FIRE RESCUE identifies the nature of the training your organization funds. When a mark has descriptive qualities, it is limited in strength and scope. (At the other end of the spectrum, a very strong mark is often described as an arbitrary or fanciful mark that has no descriptive or suggestive association with the goods or services, such as KODAK for cameras, EXXON for gasoline and APPLE for computers.)

Because the mark OCEAN CITY FIRE RESCUE has descriptive characteristics as used for fundraising for fire rescue training, the strength of the mark is limited. When a mark is descriptive, as is the case for the mark OCEAN CITY FIRE RESCUE, it is generally only enforceable (if at all) against use of the same or highly similar mark on the same or highly similar services. In this case, the marks are identical -- TOC uses the same mark on its ambulance as OCFR uses for fundraising services for firefighter training. However, while the services are related, I do not believe they are similar enough to be able to successfully challenge TOC's use of the mark. Furthermore, TOC would have a strong argument that OCEAN CITY FIRE RESCUE is merely descriptive of their ambulance and rescue services and therefore they are not using the mark as a trademark or service mark and are not therefore, infringing on OCFR's common law rights in the mark.

If TOC commences use of the mark OCEAN CITY FIRE RESCUE in the future for the clothing listed above in OCFR's federal application, OCFR may be able to object based on its federal rights once the application matures to registration. However, for the time being, unfortunately, I believe little can be done about the use of OCEAN CITY FIRE RESCUE on TOC's ambulance because the mark is so inherently descriptive. Another option to consider would be to amend OCFR's mark to come up with a more distinctive mark which would be easier to enforce against third-party users.

FOLLOW-UP INFORMATION:

To expand rights against third parties, you can do a couple of things.

First, the longer you use the mark, the stronger your rights will be because you will build up acquired distinctiveness over time. Though, keep in mind, because the mark OCEAN CITY FIRE RESCUE is highly descriptive, you will always be limited as to how much you can enforce the mark. Your rights in the mark will never be as strong as a mark that is more inherently distinctive. Your rights will always be limited to the same or nearly identical mark for the same or nearly identical goods or services.

Second, you should consider filing a new federal application for the mark OCEAN CITY FIRE RESCUE for your core services -- fundraising for firefighter training. It is very likely that the Trademark Office would find the mark OCEAN CITY FIRE RESCUE descriptive of those services and require that you seek registration on the Supplemental Register (as compared to the Principal Register). The Supplemental Register does not confer as strong a rights as the Principal Register. However, after you have used the mark for 5 years, you can seek to have the registration moved to the Principal Register based on acquired distinctiveness.

Third, if you are not committed to the mark OCEAN CITY FIRE RESCUE, you might consider modifying the mark in a way that makes it more descriptive or adopting a new, distinctive mark. The downside to a truly distinctive mark is that the consumer may not immediately understand from the mark what the goods or services are. (For example, if you didn't know of KODAK cameras, you would have no idea from the KODAK mark that it was used for cameras.) Even a mark that is suggestive of your services would more enforceable than a mark that is descriptive. A suggestive mark would be something like RESCUE READY or OCEAN CITY RESCUE READY for fundraising for firefighter training. Sometimes composite marks created from descriptive words (i.e. FIREFUNDS, FIREFUNDING, FIREFUND) are deemed suggestive and not descriptive. If you choose to go with a different mark, we can discuss possible marks. We strongly recommend conducting a trademark search for a proposed mark before adopting the mark in order to determine if there are any prior users of that mark that could block your use.