Westchester Women's Bar Association

Examples of When Trademarks Can and Cannot Incorporate Geographic Terms

Many of our clients have inquired about whether they can use a town, city, state or other geographic term as part of their trademark. Based on the repeated questions, we included a page on our firm site to address the subject matter, see our webpage entitled, Geographic Indicators As Marks. Subsequent to writing this page, the questions continued to stream in. Sometimes in trademark law, the best way to explain a concept is to provide concrete examples of the principle. The following will provide several examples of when trademarks have been allowed to register on the Principal Register even though the mark included a geographic term and examples when the mark was refused on the Principal Register for being primarily geographically descriptive under Section 2(e)(2) of the Trademark Act.

See In re Namibia Breweries Limited, Serial Nos. 77761812 & 77761817 (September 12, 2011) [not precedential], where the Board reversed a refusal to register based on geographic descriptiveness. The applicant here applied to register two marks WINDHOEK LAGER and WINDHOEK LIGHT for beer. Windhoek is the capital of the Republic of Namibia in Africa. The Board refused because it held that the Examiner did not meet its burden of proving that the primary significance of applicant’s mark was that of a generally known geographic place to the relevant purchasers. Although the Examiner offered approximately 17 websites with references to Windhoek, the sites did not show that the average American beer purchaser would identify Windhoek with geographic significance. Some evidence that could have proved useful was if the American press commonly reported on Windhoek or if Windhoek was a common travel destination for Americans. In the end, there was a lack of evidence of any significant cultural, scientific or trade relationship with Windhoek and it could not be said that the mark primarily carried a geographic significance.

See also In re Atelier Profumo Artistico Firenze S.r.L., Serial No. 77212553 (August 26, 2009) [not precendential], where the Board reversed the geographic refusal of the Examiner, but on different grounds. The applicant was seeking to register the mark PROFUMO DI FIRENZE for perfumes and other related goods. There was no dispute that the term “Di Firenze” translates in English to “of Florence” and the record established that Florence is a well-known city in Italy. Applicant argued that the term “profumo” in the context of the mark will have the meaning of “the scent of Florence” (conjuring up a sensory related commercial impression) when translated. The applicant further extended this argument by elaborating that consumers will perceive the mark’s connotation as a sweet scent originating from the perfume in the air of Florence. It was argued that the mark must be considered in the context of its use and meaning for the relevant public. The Board agreed and held that since the mark has a double entendre, it should proceed to registration. If there is any doubt as to the primary significance of the mark, the doubt is resolved in favor of the applicant.

See In re Pittsburgh Glass Works, LLC, Serial No. 77484850 (April 11, 2012) [not precedential], where the Board affirmed the Examining Attorney’s refusal finding the proposed mark primarily geographically descriptive. Here, the applicant sought to register the mark PITTSBURGH GLASS WORKS for glass and laminate windshields and windows for vehicles. The Board agreed with the Examiner that Pittsburgh is a location known by the public. The applicant is located in Pittsburgh and some of his goods originate in Pittsburgh. Therefore, a presumption of a goods/place association arises and the applicant did not submit sufficient evidence to rebut this presumption.

In addition to a possible refusal when dealing with a mark that is comprised of a geographic term, other scenarios may allow for registration. For example, if a composite mark is comprised of a geographic term that is a separable element and the other matter comprising the mark is inherently distinctive as applied to the goods or services then, the applicant may be allowed to register on the Principal Register. Registration may occur, if there is a disclaimer of the geographic term or if the applicant can demonstrate that the geographic term has acquired distinctiveness under Section 2(f) of the Trademark Act. One other possible result under these circumstances is that the primarily geographically descriptive mark may be able to register on the Supplemental Register if the application was filed under §1 or§44 of the Trademark Act. We hope these examples assist you in a better understanding of trademark law. If you still have questions, please do not hesitate to contact one of our NY trademark attorneys for a courtesy consultation.

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