Geographic Terms As Trademarks

Geographic trademarks have traditionally been of great importance for many business owners.  This is especially true for business owners selling food products, non-alcoholic beverages, and alcoholic beverages, such as beers, wines and spirits.  Disclosure of the geographic origin of some goods can often indicate to the prospective consumer significant information about the nature and quality of a product.  (For example, Sierra Nevada beer, Irish or Scotch Whisky, Norsk Vodka, Napa Valley wine.)

However, geographic trademarks are generally not registerable because they are regarded by the law as not being inherently distinctive.  Further, others in the industry need to use these geographic terms to describe their products and/or services. Stated differently, geographical terms are in the “public domain” in the sense that every seller should have the right to inform consumers of the geographical origin of his or her goods and/or services.  These geographical terms should remain free for all sellers in that geographic location to use descriptively.

What Terms Are Geographically Descriptive

A geographically descriptive term is any noun or adjective that designates geographical location and would tend to be regarded by buyers as descriptive of the geographic location of origin of the goods and/or services.

A geographically descriptive term can indicate any geographic location on earth, such as: continents, nations, such as America, United States, or other nations, geographic regions, states, either by name or nickname, cities, areas of cities, streets and addresses, rivers, oceans, lakes, maps, a nickname or abbreviation of a geographical area, and any other location referred to by a recognized name.

The significance of a mark is primarily geographic if it identifies a real and significant geographic location and the primary meaning of the mark is the geographic meaning. In other words, if the geographic term is used merely to indicate the location or origin of the good and/or services, it is purely descriptive.

As early as 1872, the Supreme Court in Delaware & Hudson Canal Co. v. Clark stated this rationale:

“And it is obvious that the same reasons which forbid the exclusive appropriation of generic names or those merely descriptive of the article manufactured and which can be employed with truth by other manufactures, apply with equal force to the appropriation of geographical names, designating districts of country.  Their nature is such that they cannot point to the original or ownership of the articles of trade to which they may be applied.  They point only at the place of production, not to the producer.”

In other words, geographically descriptive trademarks are not specific or distinctive enough to pinpoint a certain seller and to identify and distinguish his goods from those of others.  Geographically descriptive terms are placed in the same category as terms that are descriptive of some quality, characteristic, function, feature or quality of the goods and/or service.

Geographical Examination and Registration

Section 2(e)(2) of the Trademark Act, 15 U.S.C. §1052(e)(2),  prohibits registration on the Principal Register of a trademark that is primarily geographically descriptive of the goods or services named in the application. See TMEP §1210.01(a).

Section 2(e)(3) of the Trademark Act, 15 U.S.C. §1052(e)(3),  prohibits registration of a trademark that is primarily geographically deceptively misdescriptive of the goods or services named in the application. See TMEP §1210.01(b). Prior to the amendment of the Trademark Act on January 1, 1994, by the North American Free Trade Agreement (“NAFTA”) Implementation Act, Public Law 103-182, 107 Stat. 2057, the statutory basis for refusal to register primarily geographically deceptively misdescriptive marks was §2(e)(2).

Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a),  prohibits registration of a designation that consists of or comprises deceptive matter, as well as geographical indications which, when used on or in connection with wines or spirits, identify a place other than the origin of the goods. See TMEP §§1210.01(c) and 1210.08.

To establish a prima facie case for refusal to register a trademark as primarily geographically descriptive, the examining attorney must show that:

  • (1) the primary significance of the trademark is a generally known geographic location (see TMEP §§1210.02–1210.02(b)(iv));
  • (2) the goods or services originate in the place identified in the trademark (see TMEP §1210.03); and
  • (3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the trademark (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)).

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