Many businesses want to incorporate a town, city, state, or other geographic term into their trademark. Whether to highlight their local roots, attract regional customers, or leverage the reputation of a well-known location, geographic trademarks are a common subject of trademark law. However, using geographic terms in trademarks can sometimes lead to refusal by the United States Patent and Trademark Office (USPTO) under Section 2(e)(2) of the Trademark Act.
This article explores the complexities of geographic trademarks, including when they are allowed, when they are refused, and strategies to increase the likelihood of approval. We will also discuss relevant case studies and key takeaways to help businesses navigate this aspect of trademark law effectively.
Understanding Geographic Trademarks
A geographic trademark is a trademark that includes a name of a location, such as a city, state, or region. The primary concern of the USPTO in evaluating these marks is whether the geographic term primarily describes where the goods or services originate. If a trademark is deemed “primarily geographically descriptive,” it may be refused registration.
Key Factors in Determining Geographic Descriptiveness
The USPTO considers the following:
- Is the place generally known? If the location is widely recognized, the public may assume the goods or services originate there.
- Is there an association between the goods/services and the place? If the business operates in that location or produces goods there, the USPTO may find a direct connection.
- Does the mark have additional distinguishing elements? If the mark includes other distinctive terms, it may be allowed to register.
Now, let’s explore examples of trademark registration with city names and instances where applications were refused.
Examples of Allowed Geographic Trademarks
Case Study: Windhoek Lager
In re Namibia Breweries Limited examined whether WINDHOEK LAGER, a beer brand, was geographically descriptive. Windhoek is the capital of Namibia, but the Board ruled that U.S. consumers were unlikely to recognize Windhoek as a beer-producing region. Since the USPTO could not prove that the public associated the name with beer, the refusal was reversed, and the mark was allowed.
Case Study: Profumo di Firenze
In another case, a company applied to register PROFUMO DI FIRENZE for perfume products. The term “di Firenze” translates to “of Florence,” a well-known Italian city. However, the applicant successfully argued that the phrase had a double entendre, referring both to a scent associated with Florence and the fragrance itself. The Board agreed and allowed the mark, highlighting how creative branding can help overcome refusals.
Examples of Refused Geographic Trademarks
Case Study: Pittsburgh Glass Works
A company attempted to register PITTSBURGH GLASS WORKS for glass products. Since the business operated in Pittsburgh and produced glass there, the USPTO found that the term was primarily geographically descriptive. Customers would likely assume the glass originated from Pittsburgh, leading to a refusal.
Key Takeaways from Trademark Refusals
- Well-known locations are more likely to be refused unless additional distinctiveness is demonstrated.
- Businesses operating in the named location face a higher risk of refusal.
- Adding distinctive terms or proving secondary meaning can help overcome refusals.
How to Overcome Geographic Trademark Refusals
1. Prove Acquired Distinctiveness (Section 2(f))
If a mark has been used extensively and consumers recognize it as a brand rather than a location, businesses can claim acquired distinctiveness. This is particularly helpful for long-established brands.
2. Use a Composite Mark
A composite mark includes a geographic term combined with other unique elements. If the non-geographic part is distinctive, registration may be granted.
3. Register on the Supplemental Register
If a mark is primarily geographically descriptive but lacks distinctiveness, businesses can register on the Supplemental Register. This does not provide full trademark protection but can help establish future eligibility for the Principal Register.
Strategies for Strengthening Geographic Trademarks
Choose a Less Prominent Location
Using a lesser-known geographic term reduces the likelihood of refusal. Well-known locations like “New York” or “California” are harder to trademark.
Combine the Location with a Unique Identifier
Pairing a geographic term with a strong brand name or distinctive logo can improve chances of approval. For example, “Boston Dynamics” is a well-known robotics company where “Dynamics” adds uniqueness.
Use Branding to Establish a Secondary Meaning
Extensive advertising and consumer recognition can help prove a geographic name functions as a brand rather than a description.
FAQs About Geographic Trademarks
Q: Can I trademark a city or state name? A: It depends. If the name is primarily geographic and consumers associate it with the location rather than a brand, it may be refused.
Q: How can I make my geographic trademark registrable? A: Add distinctive words or symbols, prove acquired distinctiveness, or register on the Supplemental Register.
Q: What happens if my trademark is refused? A: You can appeal, modify the mark, or provide evidence of distinctiveness.
Final Thoughts
Geographic trademarks can be powerful branding tools but also face unique challenges in trademark registration. By understanding geographic descriptiveness in trademarks and applying strategic branding techniques, businesses can improve their chances of approval. If you need assistance, consulting with a Trademark Attorney can provide valuable guidance.
For more information, contact our team of Trademark Attorneys for a courtesy consultation.