New York Trademark Attorney Blog
My clients frequently inquire about using a geographic term as part of a trademark. Incorporating geographic words into a trademark places the applicant in a position where the application may be refused. There are two primary refusals often issued by Examining Attorneys at the United States Patent & Trademark office when marks include geographic terms. These are known as a Section 2(e)(2), geographically descriptive refusal and a Section 2(e)(3) geographically deceptively misdescriptive refusal. See also our firm page entitled, Common Grounds For Refusal Of A Trademark, for more information on Office Action refusals.
A mark is found to be geographically descriptive if: (1) the primary significance of the mark is a geographically known location; (2) the goods or services originate in the geographic location named in the mark; and (3) the purchasers would believe the goods or services originate in the location named in the mark. It should be noted when the mark names a known geographic location and the goods or services are from that location, it’s presumed that consumers would believe the products or services originate from the place named in the mark. If the mark is a composite mark and includes other elements besides the geographic place, and the other parts of the mark are inherently distinctive this may carry the mark. Under this circumstance a refusal may be avoided. However, adding descriptive or generic wording to the name of a geographic place will not alter its primary geographic significance.
Typically, the most challenging part of the analysis is determining if there is a goods place association when the goods or services are not from the geographic location. For example see In re Zeller, Serial No. 77544307 (September 30, 2009), where the applicant was seeking to register the mark CATALINA ISLAND GRANOLA & Design for granola. The Board found that the primary significance of the mark was geographic. The applicant lived on Catalina island, but declared the goods did not originate on Catalina Island, and the goods would not be manufactured there, but may be sold on the island. The next inquiry is would there be a goods place association. The record did not contain evidence that Catalina Island was known for producing food products like granola. The record showed that Catalina Island had agricultural concerns and did very little manufacturing. The fact that the applicant lived on Catalina Island, and would sell her goods there was not enough for a goods place association. The geographic place named in the mark would have to be associated with the granola in a way that the consuming public would believe that the granola originated there. The Board reversed the refusal.
The second type of refusal commonly issued for marks having primary geographic significance is referred to as geographically deceptively misdescriptive. This refusal is issued if the following four criteria is met: (1) the mark’s primary significance is a generally known geographic place; (2) the goods or services do not originate in the geographic place named in the mark: (3) the consuming public would be likely to believe the goods or services originate in the geographic place (because the geographic area has some association with the goods or services or is known to produce that type of goods or services); and (4) the misrepresentation would be a material factor in a substantial portion of the consuming public’s decision to purchase the goods or use the services. In re Spirits Int’l N.V., 563 F.3d 1347, 90 U.S.P.Q.2d 1489, 1490-95 (Fed. Cir. 2009); see also, my blog post entitled, Is NY A Geographically Misdescriptive Trademark When The Goods Emanate Outside NY?
For an example of this type of refusal, see In re Premiere Distillery, LLC 103 USPQ2d 1483 (TTAB 2012) [precedential], where the Board found that the mark REAL RUSSIAN for vodka was geographically deceptively misdescriptive. The Board determined the mark’s primary significance was geographic. The goods did not emanate from Russia, yet the Board determined the consuming public would incorrectly believe the vodka was originating from Russia. Since Russia is well known for vodka, the Board concluded that this fact would be material in the purchaser’s decision to purchase the vodka. The Board affirmed the refusal. Not every mark containing a geographic element will be refused, but a fact specific analysis is required to determine if the mark will be allowed to register. If you have questions, pertaining to trademark registration please contact the firm for a courtesy consultation.