Geographic Trademarks

What Is A Geographic Trademark?

A geographic trademark is a type of trademark that consists of, or includes, geographic terms or indications. This kind of trademark is used to associate a product or service with a particular geographic origin, and consequently, may suggest some qualities, characteristics, or reputation associated with that origin. It’s a tool used by businesses to differentiate their goods or services based on the geographic location, often implying certain traits like quality, craftmanship, or specialty, which the consumers might attribute to that region.

However, registering a geographic trademark can be challenging. Purely descriptive geographic names are generally not registrable as trademarks because they can be seen as unfairly limiting competition. For example, a manufacturer cannot trademark the term “French Wine” because it merely describes the origin of the product, and many other manufacturers may also produce wine from France. To register a geographic trademark, the applicant often needs to show that consumers in the marketplace associate the geographic term with a specific source of goods or services, rather than just the geographic place itself. This is known as acquired distinctiveness or secondary meaning.

Moreover, geographic indications are specifically protected in certain areas like wines and spirits, agricultural products, and foodstuffs in some jurisdictions. These are known as Protected Geographic Indications (PGIs), Protected Designations of Origin (PDOs), or Appellations of Origin, depending on the region. These special protections often have strict regulations to ensure that the product or service bearing the geographic indication is produced or performed according to traditional methods and within the specific geographic area.

In summary, a geographic trademark is a unique type of trademark used to denote a product or service’s geographic origin, suggesting specific qualities or reputations. Its registration can be complex due to regulations preventing the unfair limitation of competition, and certain special protections are provided for specific product categories in various regions.

Using Geographic Terms in Trademarks

Geographic terms are often used in trademarks to suggest a connection between a product or service and a specific location, often conveying an impression of quality, style, or other characteristics that consumers associate with that place. However, using geographic terms in trademarks is a nuanced aspect of trademark law, and the United States Patent and Trademark Office (USPTO) addresses it carefully during the registration process.

When the USPTO reviews a trademark application containing a geographic term, they primarily consider two factors: descriptiveness and misrepresentation.

Descriptiveness refers to whether the geographic term merely describes the location of the origin of goods or services. In general, geographic terms that are merely descriptive are not registrable because they could prevent other businesses from fairly indicating where their own goods or services come from. However, if a geographic term has acquired a secondary meaning – meaning consumers associate it with a specific source of goods or services rather than the location itself – it may be registered.

Misrepresentation, on the other hand, refers to a scenario where a geographic term is used in a way that could potentially deceive or cause confusion among consumers about the origin of the goods or services. The USPTO will refuse registration of a trademark if it includes a geographic term that falsely suggests a connection with the named place when the goods or services do not originate there. For example, a company located in Florida cannot use “California Wines” as a trademark if their wines are not from California.

Finally, a principle of US trademark law, known as the doctrine of foreign equivalents, applies when the geographic term is in a foreign language. The USPTO will translate the term and evaluate whether it could cause confusion, mistake, or deception about the origin of the goods or services.

Therefore, while geographic terms can add significant value for a consumer to immediately understand the products and/or services being offered, their use is subject to a nuanced evaluation by the USPTO during the registration process to ensure fair competition and prevent consumer deception.

Geographically Descriptive Trademarks

According to the Trademark Manual of Examining Procedure (TMEP), a descriptive trademark is a mark that describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. This means that it conveys immediate information about the product or service to the consumer.

The TMEP establishes that a mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. If it does not, the mark is not considered merely descriptive. Rather, it should describe some part, feature or characteristic of the goods or services to which it is applied.

Importantly, descriptive marks are generally not registrable on the Principal Register under the U.S. Trademark Act because they do not inherently identify the source of goods or services, which is a primary function of a trademark. Descriptive marks can only be registered on the Principal Register if they have acquired distinctiveness, also known as secondary meaning, in the marketplace. This means that, through extensive use, advertising, sales, and public recognition, consumers have come to recognize the trademark as identifying the source of the goods or services, rather than just describing them.

However, descriptive marks that have not yet acquired distinctiveness may in some instances be registered on the Supplemental Register, which provides some protections under Trademark Law and can serve as a stepping stone towards achieving registration on the Principal Register once acquired distinctiveness is proven.

Geographically Deceptive Trademarks

According to the TMEP, a geographically deceptive trademark is one that misrepresents the geographic origin of the goods or services, leading consumers to believe, mistakenly, that they originate from the geographic location indicated by the mark.

A trademark is considered geographically deceptive if:

• The primary significance of the mark is a generally known geographic location.
• The consuming public is likely to believe the place identified by the mark indicates the origin of the goods bearing the mark, when in fact the goods do not come from that place.
• The misrepresentation is a material factor in the consumer’s decision to purchase the goods.

The key here is that the geographic misrepresentation must be material to the purchasing decision, meaning that it would significantly influence the consumer’s choice of the product. For example, if a product were marked “Hawaiian Coffee” but the coffee was actually grown in New Jersey, and the consumer’s decision to buy was influenced by the belief that the coffee was from Hawaii, this would likely be a geographically deceptive trademark.

Importantly, geographically deceptive trademarks are not registrable under any circumstances according to U.S. trademark law, as they violate the law’s prohibition against registering deceptive trademarks. This is because they can mislead consumers and unfairly harm competition.

Geographically Deceptively Misdescriptive

The TMEP lays out the guidelines for what is considered a geographically deceptively misdescriptive trademark.

A trademark is deemed geographically deceptively misdescriptive if:

• The primary significance of the mark is a generally known geographic location.
• Consumers would likely believe that the goods or services originate from the place indicated by the mark, when in fact they do not.
• The goods or services do not originate from the place identified in the mark.

However, unlike a geographically deceptive trademark, for a mark to be considered geographically deceptively misdescriptive, the misrepresentation does not need to be a material factor influencing the consumer’s purchasing decision.

For instance, if a company based in Texas uses the trademark “Alaska Warm Coats” for its line of winter coats, the trademark could be considered geographically deceptively misdescriptive. The primary significance of the trademark is Alaska, a generally known geographic location; consumers might believe the coats are made in Alaska, when they’re not; but the misrepresentation might not significantly influence a consumer’s decision to buy the coat.

Under Trademark Law, geographically deceptively misdescriptive trademarks cannot be registered on either the Principal Register or the Supplemental Register because of their potential to mislead or confuse consumers.

Regional Certification Trademarks

Do You Need Trademark Registration Assistance?

Protecting your brand is crucial in today’s competitive business environment. Your trademarks are more than just symbols or words; they represent your reputation, your quality, and your commitment to your customers. Ensuring these trademarks are secure and effectively managed is a complex process that requires specialized legal expertise.

Our team of experienced attorneys understands the intricacies of trademark law and is equipped to guide you through every step of the trademark process. From assessing the registrability of a trademark, filing an application with the USPTO, to enforcing your rights against infringers, we are prepared to provide comprehensive legal support tailored to your business needs.

But our services don’t stop at securing your trademarks. We believe in a proactive approach to intellectual property management. We offer ongoing monitoring services to help safeguard your brand from potential infringements and keep you informed of relevant developments in the marketplace.

Whether you’re a start-up looking to establish your first trademark or an established business dealing with complex trademark matters, our attorneys are committed to protecting your brand and supporting your business growth.

We encourage you to reach out to us today. Let’s discuss how we can help secure your business’s most valuable asset – your brand. Your trademark matters to us because your business matters to us. Trust us with your trademark needs, and together, we can build a stronger brand for your business.