Westchester Women's Bar Association

Geographic Terms as Marks

Office Actions Involving Trademarks with Geographic MeaningGeographically Descriptive Marks

Often trademark applicants are interested in using geographic terms as marks. However, Section 2(e)(2) of the Trademark Act, 15 U.S.C. §1052(e)(2) does not permit registration of a mark on the Principal Register if the trademark is “primarily geographically descriptive” of the goods or services identified in the trademark application. You can find additional information on this point in the Trademark Manual of Examining Procedure (TMEP) in §1210.01(a). If the Examining Attorney refuses a trademark application on this basis, the Examiner must put forth a prima facie case showing the following three factors:

(1) The primary significance of the trademark is a generally known geographic place;

(2) The products or services originate in the location identified in the trademark; and

(3) Consumers are likely to believe that the goods or services originate in the geographic location identified in the mark.

Of these factors, factor 1 and 3 are the most critical. Factor 2 will be presumed if factor 1 and 3 are established. Also, The geographic place named in the mark does not need to be known for producing the specific goods and still the mark could be primarily geographically descriptive. This type of a refusal may be overcome by a showing of acquired distinctiveness pursuant to §2(f) of the Trademark Act.

Geographically Deceptively Misdescriptive Marks & Geographically Deceptive Marks

Since the amendment of the Trademark Act by the NAFTA (North American Free Trade Agreement) on January 1, 1994, the same test is used to identify and refuse Geographically Deceptively Misdescriptive Marks and Geographically Deceptive Marks. In re California Innovations, Inc., 329 F.3d 1334, 1339, 66 USPQ2d 1853, 1856 (Fed. Cir. 2003). The Examining Attorney must prove the following four factors, to support a refusal on either of these two grounds:

(1) The primary significance of the trademark is a generally known geographic location;

(2) The products or services DO NOT originate in the place identified in the trademark;

(3) Purchasers are likely to believe that the products or services originate in the geographic location identified in the mark; and

(4) The misrepresentation is a material element in a significant portion of the buying decisions.

Regarding the first factor, if the mark identifies a real and significant geographic place (this could be a continent, country, state, city, region, locality, street or a nick name for one of the places) and the primary meaning of the mark is a geographic meaning, it will be considered primarily geographic. For example the “Big Apple” will satisfy the first factor. If the term also has other meaning or usage other than geographic, then the Examiner must determine which is the “primary meaning”.

The Second prong is self-explanatory. However, the third prong needs explanation. To establish a goods/place association, usually it is enough to demonstrate that the purchaser identifies the place as a known source of the goods. Examiners have a more difficult time proving a services/place association because an additional reason must be provided for the consumer to associate the services with the geographic location. Moving on to the fourth prong, it requires that the Examiner show that a substantial portion of the relevant consumers is likely to be deceived, and the misrepresentation is a material factor in the purchasing decision.

Although the test for determining whether a mark is primarily geographically deceptively misdescriptive is now the same for the test for determining if a mark is geographically deceptive, the rules for registering the marks on the Principal and Supplemental Registers are different. If you are interested in examining the differences, you can review §1210.05(d) of theTMEP. Most of the trademark rules pertaining to geographic designations are fraught with subtleties and require experienced trademark counsel to interpret and apply the rules to the specific circumstances.

However, when applying a geographic mark to a wine or spirit, the rules provide clear guidance. Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a) prohibits the registration of geographical indicators on the Principal Register or the Supplemental Register, if the wines or spirits did not originate in the geographic place named in the trademark. Trademark law tends to be an esoteric subject matter, but our lawyers can assist you in this area. If you are thinking about using a trademark with geographic meaning, contact the Law Offices of Nikki Siesel PLLC, where an experienced trademark attorney can provide you with a courtesy consultation.

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