In selecting a business name, it is tempting to include the name of the state, region or city where the manufacturer or service provider is conducting business. This is also true when selecting a product name or name for a service. (Of course it is the name of products or services that is subject of trademark protection.)
Inclusion of a geographic term adds additional challenges in obtaining federal registration of a trademark.
As a general matter, inclusion of a geographic terms will be considered a merely descriptive term and therefore unregistrable. It is describing a factual element pertaining to the goods and does not distinguish the goods from other goods made in the geographic area. The mark will be viewed as not being distinctive of the products or services. As a descriptive mark, it will be eligible for placement on the Supplemental Register only. After 5 years of continuous use, you will be able to reapply for registration on the Principal Register based on presumed acquired distinctiveness (secondary meaning).
If the products or services do not in fact originate in the geographic area, then the mark is unregistrable as being misdiscriptive.
Geographic terms can be registered as trademarks when their use is arbitrary or fanciful, i.e., Atlantic Magazine or Polar ice cream (or Saturn autos).
A mark that is merely descriptive can be registered if the owner can show secondary meaning. Secondary meaning requires a showing of proof that the mark has become distinctive with regard to the products or services through continued long term use. The proof is that consumers now associate the geographic name with the trademark owner’s products. There is a presumption that a mark kept in continuous and exclusive use by the owner for 5 years have acquired secondary meaning and therefore qualified for registration.
August 27, 2006