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.







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