Can I Trademark A Geographic Designation?
Generally, a trademark that incorporates a geographic designation is registrable where the trademark has attained a secondary meaning (or acquired distinctiveness), or where they lack geographic significance or meaning in association with the goods or services. But, if the trademark that incorporates a geographic designation is used primarily to describe the location where the product is made or where the service is performed, the trademark may not be registrable because it does not distinguish the source of the goods or services.
Geographic designations may contain names of parts or regions of the world. This could include: countries, regions, states, counties, districts, cities, neighborhoods, mountains, lakes, rivers, compass points, and unofficial names for these places (OBX for Outer Banks, North Carolina; JAX for Jacksonville, Florida; Frisco for San Francisco; LoDo for the district in Lower Downtown Denver; NoLa for New Orleans, Louisiana; Lowcountry for Charleston, South Carolina).
The Lanham Act Describes Four Categories of Geographic Designations:
Primarily Geographically Descriptive Trademarks
A geographically descriptive trademark that primarily describes the geographic location of a product or service is generally not registrable unless certain criteria is met. The United States Patent & Trademark Office (USPTO) will refuse registration when it is shown that: (1) the primary meaning of the trademark is the name of a place that is generally known to the public, (2) the public would believe that the goods or service originate in the named place, and (3) the goods or services actually come from that place.
A geographically descriptive trademark may be registrable if the terms in the trademark attain a secondary meaning or acquired distinctiveness. Such secondary meaning is established where the trademark no longer causes the public to associate the goods or services with a particular location but the goods or services are associated with a particular source. The trademark owner is the one that must prove that a secondary meaning has been attained. However, if the trademark is used as an arbitrary or suggestive mark, a geographic trademark may be protected without secondary meaning.
Geographically Deceptive Trademarks
A geographically deceptive trademark is not registrable because it contains deceptive matter within the trademark. Geographically deceptive matter incorporated in the trademark would likely lead consumers to believe that the goods or services originate from the geographic location stated in the trademark, when in fact the goods or services originate elsewhere.
Primarily Geographically Deceptively Misdescriptive Trademarks
A trademark will be refused registration with the USPTO if it is deemed primarily geographically deceptively misdescriptive. The following two part test is used to determine if a trademark is primarily geographically deceptively misdescriptive: (1) does the trademark misdescribe the goods or services, and (2) are consumers likely to believe that the misdescription is true. Primarily geographically deceptively misdescriptive trademarks are refused registration with the USPTO unless the trademark has achieved secondary meaning before December 8, 1993. After the North American Free Trade Agreement (NAFTA) was passed, trademarks that are primarily geographically deceptively misdescriptive may not be registered under any circumstances.
Regional Certification Trademarks
Regional certification trademarks certify that a good or service originates in a given geographic region. This type of term is allowed trademark registration with the USPTO if the public will understand that the goods or services containing the regional certification trademark come only from the region that is indicated by the trademark.
