TTAB Affirms Refusal Based On Mark Being Geographically Descriptive

In a recently issued Trademark Trial and Appeal Board (“TTAB” or the “Board”) decision, we are reminded that using a geographically descriptive term in a trademark may risk a refusal by the Examining Attorney and the Board could affirm the refusal. See In re National Association of Veterinary Technicians in America, Inc.Serial No. 87228944 (September 14, 2018) [not precedential], where the applicant in an effort to reverse the Examining Attorney’s refusal put forth several losing arguments to the Board. A mark is merely descriptive under Section 2(e)(2) of the Trademark Act, 15 U.S.C. §1052(e)(2) when it immediately conveys information concerning a feature, purpose, function, characteristic, quality or ingredient of the goods or services. In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986). The test is once a consumer knows what the product or service is, will the trademark convey information about the goods or services. A mark will also be considered merely descriptive if it describes the types of consumers or the uses of the goods or services.

The Examining Attorney must establish the following elements:

(1) the primary significance of the term in the mark is the name of a place generally known to the public;

(2) the source of the goods and/or services is the place named in the mark; and

(3) the public would make an association between the goods or services and the place named in the mark by believing that the goods or services originate in that place.

A public association will be presumed if there is no dispute about the geographic significance being the primary significance and the goods or services originate from the geographic place named in the mark, and if the geographic location is neither obscure nor remote. To learn more about descriptive marks, see our web page entitled, Trademark Application Refusal Based On Descriptiveness or Deceptiveness. The test for geographically misdescriptive marks is similar to the test above. The primary significance of the mark must be a known geographic location, the goods or services do not originate from the place named in the mark, but purchasers are likely to believe they would, and this fact is a material consideration when deciding to buy the goods or services. See the Trademark Manual of Examining Procedure Section 1210.01(b).

The Board pointed out that sometimes, geographic terms, such as America or American may be used as part of a mark, and yet the overall commercial impression will not be primarily geographic.  An example of this use is AMERICAN GIRL for shoes, see Hamilton-Brown Shoe Co. v. Wolf Brothers & Co., 240 U.S. 251 (1916). Another example is AMERICAN BARRISTER for legal services, see In re Robert J. Olejar, Serial No. 86302887 (August 11, 2016) [not precedential]. Since barrister is a lawyer in England or Wales, the Board held that it did not have a descriptive meaning for legal services rendered in the United States. The Board held that the mark presented an incongruity, and this renders the mark suggestive. The geographic term must take on an arbitrary or suggestive meaning to avoid a merely descriptive refusal. The objective is to have the overall commercial impression not be primarily geographic.

In the case at bar, we do not have an incongruity or double meaning. Instead, we have a common case where the term America is used to indicate the United States as the origin of the services. Applicant attempted to argue that its use of the wording VETERINARY NURSES was exclusive and not descriptive. The Examining Attorney submitted evidence showing third party use on websites, and that such use was mostly descriptive and sometimes even generic. In addition, the Examiner introduced evidence into the record showing the term ASSOCIATION used in the mark to mean a group of professionals. Therefore, the term ASSOCIATION lacked any source identifying meaning. In the end, the Board determined that the applicant’s mark AMERICAN VETERINARY NURSES ASSOCIATION for veterinary medicine services, identifies a well known geographic place and that consumers would believe the services originate from the location named in the mark. The Board affirmed the refusal to register the mark. If you have questions about whether your trademark is primarily geographically descriptive or geographically misdescriptive, please contact our office for a courtesy consultation.