What Are Geographic Terms?
Geographic terms describe a location and may contain names of parts or regions of the world, such as: countries, states, counties, districts, cities, neighborhoods, mountains, lakes, rivers, and even unofficial names for these places (for example, OBX for Outer Banks, North Carolina; Frisco for San Francisco).If geographic terms are used in a trademark to describe a location where the products are made or services performed, the trademark will typically be ruled unregisterable unless the terms have attained a secondary meaning. The Lanham Act references four different categories of geographic terms: (1) primarily geographically descriptive terms, (2) geographically deceptive terms, (3) primarily geographically deceptively misdescriptive terms, and (4) regional certification marks.
Primarily Geographically Descriptive Terms
Primarily geographically descriptive terms are words or phrases that describe the geographic origin of a product and are generally not registrable when it is shown that: (1) the primary meaning of the trademark is the name of a location that is generally known to the public; (2) the public would believe the goods/services originate in that named location; and (3) the goods/services actually do originate in that named location. A geographically descriptive trademark may potentially achieve trademark registration if the mark attains a secondary meaning, which the trademark applicant must prove the word or phrase used in association with the trademark has been attained.
Geographically Deceptive Terms
Geographically deceptive terms are words or phrases that are deceptive in regards to the location where the products or services would originate. That is, the trademark would lead consumers to believe that the products or services originate in the location stated, when in fact the products or services originate elsewhere. These types of trademarks cannot be registered with the USPTO when the misrepresentation is material to the decision of the public to purchase the product or service.
Geographically Geographically Deceptive Misdescriptive Terms
A two part test is used to determine if a trademark is deceptively misdescriptive; (1) does the trademark misdescribe the goods or services, and (2) are consumers likely to believe that the misdescription is true. These types of trademarks cannot be registered unless the trademark achieved a secondary meaning prior to December 8, 1993. Otherwise, the trademark may cannot be registered even if it obtains a secondary meaning.