What is a primarily geographically descriptive trademark?
If you apply for a trademark that contains a geographic location, there is a risk that your application may be refused on the grounds that the mark is geographically descriptive. Not all marks that contain a geographical location will be refused registration. The issue is whether the mark is primarily geographically descriptive. To meet that “primarily” requirement, the mark must have the following [see TMEP § 1210.01]:
- the primary significance of the mark is a generally known geographic location;
- the goods or services originate in the place identified in the mark (if not, the mark might be primarily geographically misdescriptive); and
- purchasers would likely make the association that the goods or services come from the geographic location.
Two of the above conditions go hand in hand, namely, the primary significance element and the purchasers’ association element. If a geographic location is obscure or not well known to the American public, then the primary significance of the mark would not be a generally known geographic location. And, if the geographic location is not generally known, then it would be unlikely that the relevant American consumer would associate the goods/services as coming from that location.
What are examples of marks that were not primarily geographically descriptive?
- NEWBRIDGE HOME for cutlery
- THE MONTECITO DIET for diet publications
- WINDHOEK LAGER for beers
- CATALINA ISLAND GRANOLA for granola
What is acquired distinctiveness?
A geographically descriptive mark may acquire distinctiveness when the consuming public recognizes the mark as identify the source of a product or service. This source indicator feature of a mark is also known as secondary meaning. One possible of showing acquired distinctiveness is the continuous use of the mark for at least five years.
What is a primarily geographically misdescriptive mark?
A primarily geographically misdescriptive mark is quite similar to descriptive mark except that the goods or services don’t actually originate from the geographic location. There is also one additional condition to find a mark misdescriptive:
- the misrepresentation is a material factor in a significant portion of the relevant’s consumer’s decision to buy the goods or services [see TMEP § 1210.01(b)].
So, if you can show that relevant American consumers would not care about this geographical misrepresentation, you may be able to register such a mark even though the product does not actually originate from the place identified in the mark.
Supplemental Register option
If a mark has been used in commerce and satisfactory evidence of use has been submitted to the USPTO, a primarily geographically descriptive mark might be eligible for registration on the Supplemental Register. This might be a reasonable compromise where the applicant gets at least a federal trademark registration without having to spend more money arguing against the geographic rejection.
Keep in mind an Intent-To-Use application is not eligible for the Supplemental Register. An ITU applicant must first submit an acceptable Statement of Use before switching to the Supplemental Register, which will cause the application to have a later effective filing date.
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