Overview of USPTO Geographically Descriptive Trademark Refusals
Using Geographic Terms in Trademarks
The Lanham Act, officially known as the Trademark Act of 1946, governs trademarks, service marks, and unfair competition in the United States. With regards to geographic terms, the Act provides specific guidelines.
According to the Lanham Act, geographic terms or place names are generally not registrable as trademarks if they are deemed geographically descriptive of where the goods or services originate. This is because such terms should remain free for all businesses in a particular location to indicate where their goods or services come from.
A geographic term can only be registered as a trademark if it has acquired distinctiveness or secondary meaning, which means that consumers primarily associate the geographic term with a specific producer or source of goods or services, rather than the geographic location itself. This is usually achieved through long and exclusive use of the mark in commerce.
However, if a geographic term is used in a trademark in a way that is geographically deceptive, it cannot be registered under any circumstance. If consumers are likely to believe (incorrectly) that the goods or services originate from the geographic location indicated by the trademark, and this misrepresentation is a material factor in the consumer’s decision to purchase those goods or services, then the mark is considered geographically deceptive.
Finally, under the doctrine of foreign equivalents, foreign geographic terms that the average American consumer would readily recognize as indicating the source of goods or services are treated the same way as their English equivalents under the Lanham Act.
What Are Geographically Descriptive Trademarks?
A geographically descriptive trademark is a type of trademark that primarily denotes the geographic origin of goods or services. Examples of geographically descriptive trademarks include names that indicate the source location, such as “California Pizza Kitchen” or “Philadelphia Cream Cheese.”
The reason why geographically descriptive terms can’t be registered on the USPTO Principal Register without acquiring secondary meaning is due to the nature of trademark law itself. Trademark law seeks to prevent confusion among consumers about the source of goods or services. If a geographically descriptive term was allowed to be registered without secondary meaning, it could potentially mislead or confuse consumers about the origin of the product. For instance, if someone were to trademark the term “Italian Pizza” for their pizza restaurant located in Texas, it might lead consumers to falsely believe that the pizza is actually made in Italy.
Furthermore, trademark law aims to prevent one company from having an unfair advantage over others by claiming exclusive rights to a term that others may need to use to describe their goods or services. In our example, other pizza restaurants might also need to use the term “Italian Pizza” to describe their offerings. Therefore, the law doesn’t allow a company to claim exclusive rights to geographically descriptive terms unless they’ve acquired secondary meaning.
Secondary meaning refers to the point at which the consuming public primarily associates the trademark with a particular producer or source, rather than the underlying geographic or descriptive meaning of the term. Once a geographically descriptive term has acquired secondary meaning, it can be registered as a trademark because it is now primarily identified with a particular source of goods or services, rather than being seen as a general geographic descriptor.
This requirement helps ensure a balance between the need for businesses to be able to protect their brand identity and the public’s right to use common descriptive terms. However, secondary meaning can be difficult to prove for geographically descriptive trademarks. To provide secondary meaning, the trademark owner may be required to provide the USPTO examining attorney evidence in the form of consumer surveys, sales success, advertising expenditures, media coverage, length and exclusivity of use, direct consumer testimony, etc.
What Are Geographically Deceptive Trademarks?
A geographically deceptive trademark is one where the geographic term misleads consumers into thinking that the goods or services originate from a different place than they actually do, and this geographic misrepresentation is a material factor in the consumer’s decision to purchase those goods or services.
According to the Trademark Manual of Examining Procedure (TMEP), for a trademark to be considered primarily geographically deceptive under 15 U.S.C. §1052(e)(3), the following conditions must be met:
For example, if a company based in Ohio uses a mark “California Wines” but its wines are not from California, this could be seen as geographically deceptive if consumers are likely to purchase the wine under the assumption that it’s from California (known for its wine production) and that fact is material to their purchase decision.
A geographically deceptive trademark is not allowed to register on the USPTO principal register, even if it acquires secondary meaning. This is because deceptive marks are prohibited under the Lanham Act, the federal statute governing trademarks in the U.S., due to their potential to confuse or deceive consumers. This prohibition is a reflection of the underlying purpose of trademark law, which is to protect consumers and ensure fair competition.
The distinction between geographically descriptive and geographically deceptive marks is very important. Geographically descriptive marks can be registered if they acquire secondary meaning, while geographically deceptive marks cannot be registered under any circumstances.
What Are Geographically Deceptively Misdescriptive Trademarks?
A geographically deceptively misdescriptive trademark is one that misrepresents the geographic origin of the goods or services. It implies that the products or services originate from a particular location when they actually do not, but the misrepresentation is not necessarily a material factor influencing a consumer’s purchasing decision.
According to the TMEP, a mark is primarily geographically deceptively misdescriptive under 15 U.S.C. §1052(e)(3) if:
Note that this doesn’t require that the geographic misrepresentation be a material factor in a consumer’s decision.
The reason such trademarks can’t be registered on the USPTO principal register without acquiring secondary meaning is that they could potentially mislead or confuse consumers about the product’s origin. However, it’s also important to know that even if they do acquire secondary meaning, these marks cannot be registered if they’re found to be primarily geographically deceptively misdescriptive, due to the prohibition of registration of deceptive marks under the Lanham Act. This is different from merely geographically descriptive trademarks, which can be registered if they have acquired secondary meaning.
The policy reasons for this are tied to consumer protection and ensuring fair competition. Allowing a business to register a geographically deceptively misdescriptive trademark could give them an unfair advantage and potentially mislead consumers, which is counter to the purposes of trademark law.
What Are Regional Certification Trademarks?
A regional certification trademark, according to the TMEP, is a type of certification trademark that certifies the regional or other geographic origin of the goods or services.
A certification trademark, in general, is used by a party other than its owner to certify a particular aspect about goods or services. This can include aspects such as geographical origin, quality, accuracy, or other characteristics. The owner of the trademark is responsible for controlling its use and ensuring that the attributes it certifies are true.
Regional certification trademarks are therefore used to certify that goods or services originate from a specific geographic region. They don’t denote the commercial origin of products, but rather certify characteristics and qualities attributable to the geographic region.
For example, “Champagne” can be considered a regional certification trademark, as it certifies that a sparkling wine is made from grapes grown in the Champagne region of France, following specific methods. Similarly, “Roquefort” for cheese would certify that the cheese was produced in the Roquefort region of France following the established local methods.
The benefit of such marks is that they ensure quality and characteristics that consumers associate with products or services from a specific region. In terms of trademark law, they are protected from infringement, and unauthorized or misleading use can lead to legal consequences.
It’s important to note that the owner of a certification trademark cannot themselves produce the goods or provide the services that the mark certifies. Rather, they administer the certification program and allow producers who meet the certification standards to use the trademark.