Geographically Descriptive Trademarks: Geographic terms are tricky to register but can link your product or services to a successful trait of your region. It may be a good time to call us for help!


Geographic terms: As a general rule, trademarks involving a geographical term are "weak" and are entitled to a narrow scope of protection. A mark that is composed entirely of a geographic term may be registrable only on the Supplemental Register or on the Principal Register upon proving acquired distinctiveness (that mark has become distinctive of that party's goods in commerce). A mark that is a composite of a geographic term and a distinctive term may be able to register on the Principal Register if the geographic term can be disclaimed and the remaining part of the composite term is distinctive.


Examples of weak geographic terms: AN INDIA VILLAGE for Textile Fabrics to be used in making men's shirts and sports coats, women's dresses, suits and shirts; men's and women's walk shorts and neckties would be subject to a limited scope of protection as a trademark. Methuen International Mills v. Rajinder Fabrics, Inc., 406 F.2d 1392 (C.C.P.A., 1969). The term `ANGLO' (meaning British) has a geographically descriptive connotation as applied to piece goods and articles of clothing and would subject to a limited scope of protection as a trademark unless it had acquired distinctiveness. Anglo Fabrics Company v. Fabriken Anglomac a/S, 282 F.Supp. 454 (D.D.C., 1968). DENVER WESTERNS is primarily geographically descriptive of western-style shirts that have their geographical origin in Denver. In re Handler Fenton Westerns, Inc., 214 USPQ 848 (TTAB 1982).


A potential trademark is geographically descriptive under Lanham Act Section 2(e)(2) if the term conveys to customers primarily or immediately geographical connotation, and the goods or services do in fact come from the place so named. If the mark in question is primarily geographically descriptive of goods or services, it may be registrable on Supplemental Register, or on Principal Register upon showing under Section 2(f) that mark has become distinctive of that party's goods in commerce. In re The Steel House, Inc., 206 USPQ 956 (TTAB 1980). An example of a mark that was not registrable because it was a geographically descriptive mark is DURANGO for chewing tobacco. In re Loew's Theatres, Inc., 226 USPQ 865 (Fed. Cir. 1985). Another example is the proposed service mark GRAND CANYON WEST that was found to be merely descriptive, and geographically descriptive since "Grand Canyon" describes fundamental purpose or object of identified services, and "West" simply identifies more precisely where applicant offers its services. Grand Canyon West Ranch LLC v. Hualapai Tribe, 88 USPQ2d 1501 (TTAB 2008)


A potential trademark is geographically misdescriptive under Lanham Act Section 2(e)(2) if the term conveys to customers primarily or immediately geographical connotation, and the goods or services do NOT in fact come from the place so named. If the geographical term for particular goods or services is deceptive because the geographic area is famous for some particular goods or services, the mark will not be registrable under either the Supplement Register or Principal Register even upon showing of acquired distinctiveness. If the geographic term for a particular goods or services is not deceptive but is still misdescriptive,  the mark may be registrable under either the Supplement Register or Principal Register upon showing of acquired distinctiveness. In re The Steel House, Inc., 206 USPQ 956 (TTAB 1980). An example of a geographically misdescriptive trademark is AMERICAN BEAUTY for sewing machines of Japanese manufacturer. Singer Manufacturing Co. v. Birginal-Bigsley Corp., 319 F.2d 273, 275, 138 USPQ 63, 65 (CCPA 1963). KUBA KUBA was found to be primarily geographically deceptively misdescriptive of cigars, tobacco, and related products that did not originate in Cuba nor would they be made from Cuban seed tobacco. In re Jonathan Drew, Inc., 97 USPQ2d 1640 (TTAB 2011).


An example of a trademark that was NOT primarily geographically deceptively misdescriptive is the LE MARAIS mark for restaurant services in New York is because the facts do not show that patrons would identify "Le Marais" Jewish neighborhood in Paris as source of services at applicant's restaurant in New York, and that such "services-place association" would be material factor in consumer's decision to patronize restaurant. In re Les Halles De Paris J.V., 67 USPQ2d 1539 (Fed. Cir. 2003)

A potential trademark is not geographically descriptive (is arbitrary) under Lanham Act Section 2(e)(2) if the trademark in question does not convey immediate or readily recognizable geographical significance to the average consumer. In re The Steel House, Inc., 206 USPQ 956 (TTAB 1980). An example of a mark that is geographic but not geographically descriptive or misdescriptive would be the term ALASKA applied to bananas. ALASKA is entirely arbitrary and would be registrable because reasonable people would not believe that bananas had their origin in Alaska. In re Handler Fenton Westerns, Inc., 214 USPQ 848 (TTAB 1982). Other arbitrary geographic marks are (as cited in In re Loew's Theatres, Inc., 226 USPQ 865 (Fed. Cir. 1985)(internal citations omitted) : DUTCH and DUTCH BOY for paint; HYDE PARK for men's suits; LA TOURAINE for coffee; and BRITTANIA for jeans.




PLAN FOR A SUCCESSFUL, STRONG TRADEMARK

To verify a potential trademark is strong, is available to use, and is ready to register, the process should be more than a direct hit federal search. To maximize the commercial strength and minimize the weaknesses of a trademark, we start with these five steps:

1) Verify Inherent Strength (this avoids merely descriptive, geographically descriptive, likelihood of confusion and other office actions),

2) Verify Right to Use, (this avoids likelihood of confusion refusal office actions and others)

3) Verify Right to Register, (this avoids many types of refusals including merely descriptive, deceptively misdescriptive, geographically descriptive and others that can often be predicted)

4) Verify the potential mark (as currently used) Functions As A Mark, and (this avoids specimen refusals, trade name refusals, and others. The USPTO is looking for valid use not just any use of a mark.)

5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing. (This avoids office actions to correct incorrect IDs  which can slow down a registration. Incorrect IDs  may be corrected during the prosecution of a trademark if they do not materially alter the mark or the ID. Correcting problems before application saves time and money. Filing in a new class after an application has been submitted to cure a problem ID is the same price as a new application in that class.)

*We don’t stop here but this is a good start!


Call us at 1-651-500-7590   for a Strong Trademark. A Strong Trademark is Not Just a tool to increase sales to customers–it is also easier to sell to your investors & licensees. If you have already received a refusal, it may not be too late, call us.







Not Just Patents® LLC

PO Box 18716, Minneapolis, MN 55418  

1-651-500-7590    

IP@GoNJP.com


Aim Higher®

Facts Matter

Search Not Just Patents® sites:


StepsToATrademark.net

Tie It Up

Securing the Right IP

Call 1-651-500-7590 or email IP@GoNJP.com or ContactTrademark.com for Responses to Office Actions; File or Defend an Opposition or Cancellation; Patent or Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

Steps to a Patent    How to Patent An Invention

Filing Requirements for Patent Applications

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill  Abandoned Trademarks

Should I Get A Trademark or Patent?

Patentability Evaluation

Trademark Disclaimers   Trademark Dilution     Oppose or Cancel?

Examples of Disclaimers  Business Name Cease and Desist

Sample Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File   How to Trademark Search

37 CFR § 1.53 Application number, filing date, and completion of application

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Difference between Provisional and Nonprovisional Patent Application

Opposition Pleadings    UDRP Elements    Loss of Trademark Rights

How To Answer A Trademark Cease and Desist Letter

Shop Rights  What is a Small or Micro Entity?

Trademark Refusals    Does not Function as a Mark Refusals

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Acceptable Specimen       Supplemental Register  $199 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Patent Pending see also Patent Marking

Trademark Attorney for Overcoming Office Actions

Functional Trademarks   How to Trademark     Surname Refusal

Patent Drawings

Grounds for Opposition & Cancellation     Cease and Desist Letter


Valid/Invalid Use of Trademarks     Trademark Searching

How to Respond to Office Actions

What is a Compact Patent Prosecution?


Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion  DuPont Factors

Patent search-New invention

Color as Trade Dress  3D Marks as Trade Dress

Patent Search-Non-Obvious

Ornamental Refusal  Standard TTAB Protective Order

How to Keep A Trade Secret

Descriptive Trademarks Trademark2e.com  Likelihood of Confusion 2d

State & Federal Trade Secret Laws

Merely Descriptive Trademarks   Merely Descriptive Refusals

Chart of Patent vs. Trade Secret

Register a Trademark-Step by Step   Trademark Fixer

ID of Goods and Services see also Headings (list) of International Trademark Classes

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Geographically Descriptive or Deceptive

Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

What Does ‘Use in Commerce’ Mean?    SCAM Letters

Section 2(d) Refusals   ApplyToTrademark.com

Trademark Incontestability  TTAB Manual (TBMP)

Typical Brand Name Refusals  What is a Family of Marks?

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

TSDR Trademark Status and Document Retrieval

What are Dead or Abandoned Trademarks? Can I Use An Abandoned Trademark?  Can I Abandon a Trademark During An Opposition?

Published for Opposition see also Opposition Steps/Cancellation Steps

Counterclaims and Affirmative Defenses

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process

Zombie Trademark  Not Just Patents Often Represents the Underdog  

What Does Published for Opposition Mean?

What is the Difference between Principal & Supplemental Register? What If Someone Files An Opposition Against My Trademark?

Acquired Distinctiveness  2(f) or 2(f) in part

How to Respond Office Actions  DIY Overcoming Descriptive Refusals

Extension of Time to Oppose

Trademark Clearance Search   DIY Trademark Strategies


©2008-2014 All Rights Reserved. Not Just Patents LLC, PO Box 18716, Minneapolis, MN 55418.

Call: 1-651-500-7590 or email: IP@GoNJP.com. This site is for informational purposes only and is provided without warranties, express or implied, regarding the information's accuracy, timeliness, or completeness and does not constitute legal advice. No attorney/client relationship exists without a written contract between Not Just Patents LLC and its client. Past performance is no guarantee of future results. Privacy Policy Contact Us See us at NotJustPatents.com