Geographic trademarks may or may not be permissible depending on a number of considerations. This article will delve a bit deeper into the legal framework surrounding Geographic Trademarks and when/how they may be permissible. However, if a geographic term within a mark is the central feature of the mark such that the mark’s primary significance is geographic, the mark will be refused.
A TRADEMARK INFORMS THE CONSUMER OF THE SOURCE OF THE PRODUCT
Geographic trademarks may or may not be permissible depending on a number of considerations. Remember, a trademark is a source identifier – a word, logo, slogan, sound and or design that when tethered to a good or service, enables a buyer to discern the company, which produces the good/service. What happens when your trademark is the name of the place that you do business? Is that Trademarkable?
Well, one could very easily understand why a business would want to incorporate into its business name, the name of the city/town in which the business operates. Wouldn’t it be great for a Pizza shop owner in Cleveland, Ohio to own the trademark, Cleveland’s Pizza? This would be a very powerful brand indeed. Of course, all of the other pizza shop owners in Cleveland would likely find this to be rather unfair and an excessive advantage. This article will delve a bit deeper into the legal framework of Geographic Trademarks and when/how they may be permissible.
GEOGRAPHIC TRADEMARKS AND THE TRADEMARK ACT
Section 2(e)(2) of the Trademark Act, 15 U.S.C. §1052(e)(2) explicitly prohibits the registration of trademarks on the Principal Register if the trademark is “primarily geographically descriptive” of the goods or services specified in the trademark application.
You may very well be wondering, what precisely would need to happen for the examining attorney to find that the mark is “Primarily” Geographically descriptive?
According to the Trademark Manual of Examining Procedure (TMEP), the examining attorney must meet the three following criteria to establish a prima facie case for refusal:
(1) The primary significance of the trademark is a generally known geographic place;
(2) The goods or services originate in the location identified in the trademark;
(3) Purchasers are likely to believe that the goods or services originate in the geographic place identified in the mark. §1210.01(a).
While all of these factors are key considerations, it is undoubtedly the case that item 1 on this list is of the greatest importance. Remember, the purpose of a trademark is to serve as a source identifier. Thus, if the primary significance of the trademark is the place, rather than the source-company of the goods/services sold under the mark, the name is not functioning as a trademark. This point segways nicely into the importance of the third factor – if purchasers are identifying the goods more with the place than with the brand identiy of the source company, the name is not “acting” like a trademark.
GEOGRAPHIC TRADEMARKS CANNOT BE DECEPTIVLY MISDESCRIPTIVE
Trademark law has a rather interesting corollary rule to the descriptiveness prohibition (trademarks that merely describe the goods/services tethered to the mark are ineligible for protection on the principal register), which involves the problem of Misdescriptiveness. Simply, if the mark is misleading as to the nature of the goods/services, it may be ineligible for registration.
Consider the following from TEMP 1203.02(e)(i)
“If there is evidence in the record clearly indicating that the mark or a term(s) in the mark is misdescriptive (e.g. , the specimen or language in the identification indicates that the goods/services do not have the relevant feature or characteristic), the examining attorney must determine whether the misdescription is believable and material and do the following:
If the misdescription would not be believable, no refusal under either §2(a) or §2(e)(1) should be made. If the application is otherwise in condition for publication, approve the mark for publication. Otherwise, issue an Office action containing all other relevant refusals and/or requirements.
If the misdescription would be believable, but would not be material, issue a refusal under §2(e)(1) as deceptively misdescriptive (or disclaimer requirement if appropriate, i.e., if the term at issue is not part of a unitary expression), with supporting evidence, and all other relevant refusals and/or requirements.
If the misdescription would be believable and material, issue a deceptiveness refusal under §2(a) with supporting evidence, an alternative refusal under §2(e)(1) as deceptively misdescriptive (or disclaimer requirement if appropriate), and all other relevant refusals and/or requirements.”
The idea here is simple; marks CANNOT fundamentally misinform the consumer about the what it is that is being sold under the mark. If the mark is “deceptive” in this way, it is non-trademarkable. How does this apply to Geographic Trademarks? The test for determining if a prospective mark is Primarily Geographically Deceptively Misdescriptive is satisfied when the following three factors are met:
(1) the primary significance of the mark is a generally known geographic location (see TMEP §§1210.02–1210.02(b)(iv));
(2) the goods or services do not originate in the place identified in the mark (see TMEP §1210.03);
(3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark (see TMEP §§1210.04–1210.04(d)). Note: If the mark is remote or obscure, the public is unlikely to make a goods/place or services/place association (see TMEP §1210.04(c)); and
(4) the misrepresentation is a material factor in a significant portion of the relevant consumer’s decision to buy the goods or use the services (see TMEP §§1210.05(c)–(c)(ii)).
In re Miracle Tuesday, LLC, No. 11-1373 (Fed. Cir. Oct. 4, 2012)
It goes without saying that there is a great deal of nuance here but the essential question is, what is the association between the goods and the places identified in the mark AND do the goods actually come from that place? If consumers would likely believe that the goods actually originated in that place, despite the fact that they do not, the mark will not register.
GEOGRAPHIC MARKS: WHAT THE USPTO REALLY CARES ABOUT
Remember, trademarks are ultimately tools to bind a product/service with the name/logo tethered to it. Ask yourself, is your prospective mark a source identifier (something people immediately understand to recognize your brand) or is it something else? If a geographic term within a mark is the central feature of the mark such that the mark’s primary significance is geographic, the mark will be refused. Conversely, if the mark is fundamentally removed from the geographic aspect of the mark, the mark will register. Please note, International Trademarks filed through the Madrid Protocol may perhaps require a separate analysis.
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