If you have read my article “Introduction to Trademarks” you will know that I encourage use of arbitrary or coined words as trademarks. They provide the strongest protection. I am always leery of geographical place names in trademarks. At best they provide weak protection. Also it may not be possible to register the marks on the USPTO Principal Trademark Register.
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, and not the business name.)
Registration of marks containing a geographic name
The remainder of this article focuses upon the registration of a mark on the Principal Register of the USPTO. In most instances, a mark that cannot be registered on the Principal register can still be used as a common law trademark. (Common law trademarks may be subject to less protection than a registered mark. Only a federally registered mark is entitled to be denoted with the symbol ®.)
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 descriptiveterm 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.
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. Also a descriptive mark will be eligible for placement only on the USPTO Supplemental Register. After 5 years of continuous use, you will be able to reapply for registration on the Principal Register based on presumed acquired distinctiveness, i.e., secondary meaning.
Arbitrary or fanciful use of geographical place names may be registrable where there is no likelihood that a reasonable consumer would be confused as to the place of origin.
Examples include Atlantic Magazine, Polar ice cream, Park Avenue or South Beach. An extreme fanciful use of a place name would be Saturn autos. Fanciful use would include use of a geographic place name, e.g., South Beach, where it refers to a known and characteristic attitude or “atmosphere” of the place. Arizona Ice Tea is cited as another example of fanciful use of a geographic place name.
If the products or services do not in fact originate in the geographic area, then the mark is un-registrable as being mis-descriptive. An example would be cheese, made in Texas but using the mark Wisconsin. Some geographical place names are protected as Geographical Indicators. Even use of these descriptors as a non-registered mark, i.e., a common law mark, is not permitted. The mark Idaho Potatoes can only be used for potatoes grown in Idaho. The mark Napa cannot be used as part of a mark for wine produced in Texas. A classic example is only effervescent wine grown in the Champagne region of France can be marked Champagne.
I am writing this article from Houston. The Texas Hill Country is well known as a region west of Austin and San Antonio, Texas. It would be an interesting question whether a consumer in Seattle would believe a wine labeled “Hill Country Chardonnay” originated in the Hill Country region of Texas or whether, alternatively, would dismiss the mark as an arbitrary reference to a rural or Arcadian (rustic rural paradise) region. If the mark is not recognized in the United States (the market place) as an actual geographical region, use of a geographical place name will not be mis-descriptive. See In re The Newbridge Cutlery Co. (Newbridge is a town in Ireland known in areas of Europe for its cutlery. However, the court found in the United States, the name or mark Newbridge was not associated with cutlery and therefore the use of the name in the United States market was not geographically mis-descriptive.)
As a general matter, I do not encourage the use of a geographical place name as a trademark or service mark. A catchy, fanciful word or phrase, especially a coined word, better serves creating a brand in the mind of consumers.
Copyright David McEwing, 2019