A USPTO (United States Patent and Trademark Office) geographically descriptive refusal is a rejection of a trademark application by the USPTO on the grounds that the proposed trademark is primarily geographically descriptive. This means that the trademark primarily describes the location of the goods or services, rather than serving as a source identifier for the goods or services. This article briefly discusses the use of geographic terms in trademarks and how the USPTO will address these geographic terms during the trademark registration process.
Geographically Descriptive Trademarks
A geographically descriptive trademark cannot be registered on the Principal Register unless it has acquired distinctiveness through secondary meaning, which can be shown through evidence of substantial exclusive use in commerce for five years or more. If this requirement is not met, then the trademark may still be eligible for registration on the Supplemental Register.
The USPTO examining attorney will find a proposed trademark to be geographically descriptive if all the following factors are met:
The primary significance of the trademark is a generally known geographic location;
The products or services come from the geographic location included in the trademark; and
Consumers are likely to believe that the goods or services originate in the geographic location identified in the trademark.
If the USPTO examining attorney issues an Office Action rejecting your trademark application on the ground that the trademark is primarily geographically descriptive, there are options; however, you would be well advised to obtain the assistance of an experienced trademark attorney to assist in these matters.
Provide evidence of acquired distinctiveness under what is generally referred to as Section 2(f): If the proposed trademark has been in use for five years or more, and has acquired distinctiveness through secondary meaning, this can be submitted as evidence to the USPTO.
Present arguments to counter claim of descriptiveness: Present evidence and arguments that the proposed trademark is not primarily geographically descriptive to persuade the examining attorney to withdraw the rejection.
Disclaim the geographic term: A disclaimer can be filed, in which you agree not to claim exclusive rights to the geographic term in the trademark.
Submit a request for an amendment: You can request to amend the trademark by adding a term to the trademark that would make it no longer geographically descriptive.
Appeal the refusal: If you believe that the refusal was made in error, you can appeal the decision to the Trademark Trial and Appeal Board.
Re-file the application with a different trademark: if none of the above options are feasible, you can re-file the application with a different trademark that is not geographically descriptive.
Geographically Deceptive Trademarks
Geographically deceptive trademarks are trademarks that suggest a connection to a particular place, even though the goods or services associated with the trademark are not actually from that place. These types of trademarks can be misleading to consumers and may be subject to legal challenges. Examples of geographically deceptive trademarks include using a name or logo that implies a connection to a specific region or country, even though the goods or services are not actually from that place. To support a refusal of registration on the ground that a geographic term is deceptive, the USPTO examining attorney must show that:
The primary significance of the mark is a generally known geographic location;
The goods or services do not originate in the place named in the trademark;
Purchasers would be likely to believe that the goods or services originate in the geographic place identified in the trademark (If the trademark is remote or obscure, the public is unlikely to make a goods/place or services/place association; and
The misrepresentation is a material factor in a significant portion of the relevant consumer’s decision to buy the goods or use the services.
A trademark that is “geographically deceptively misdescriptive” is one that misleads consumers into believing that the goods or services originated from a certain geographic location, when in fact they do not. For example, a trademark that includes a geographic term such as “Paris” or “Italy” for goods that are not actually made in that place, would be considered geographically deceptively misdescriptive.
The USPTO examining attorney will refuse registration of a trademark that is geographically deceptively misdescriptive because it would be considered to be a false representation of the origin of the goods or services and would likely deceive consumers.
The USPTO examining attorney must prove the following four factors, to support a refusal on grounds that the trademark is Geographically Deceptively Misdescriptive:
Is the primary significance of the trademark a generally known geographic location?
Do the products or services not originate in the place identified in the trademark?
Would purchasers believe that the products or services do originate in the geographic place identified in the trademark?
Would the misrepresentation be a material factor in a purchaser’s decision to buy the products or services?
If “yes” is the answer to all four of these questions, then the USPTO examining attorney will issue an Office Action refusing registration of your trademark on the basis that it is geographically deceptively misdescriptive. The Office Action will indicate why the examining attorney believes that your trademark is geographically deceptively misdescriptive and, therefore, not entitled to registration.
To overcome this trademark refusal, you can provide evidence that the primary significance of the trademark is not geographic or that the goods or services are in fact made in the place named in the trademark. Additionally, you can show that the public is not likely to be deceived by the trademark.
Regional Certification Trademarks
Regional certification trademarks are trademarks that are used to indicate that a product or service has met certain standards or criteria specific to a particular region or geographic area. They are a form of certification trademarks that are used by organizations, government bodies, or other entities to certify that products or services meet certain standards or criteria. These standards or criteria may relate to quality, origin, materials, or other characteristics of the product or service. Examples of regional certification trademarks include “Authentic Caribbean” for various clothing items and food and beverages from Caribbean nations, “Columbian” for coffee from Columbia and “Grown in Hawaii with Aloha (with design)” for agricultural products from Hawaii. These marks are intended to help consumers identify products or services that meet certain regional standards and to promote the reputation of products or services from a certain region.
To register a regional certification trademark with the USPTO, it must be shown that 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. The issue is not whether the public is expressly aware of the certification function of the mark or the certification process underlying use of the mark, but rather is whether the public understands that goods bearing the mark come only from the region named in the mark.
Although using a geographic term in a trademark generally poses a high risk of a geographically descriptive refusal, it can be done successfully as long as the proposed trademark meets certain requirements. A strong trademark is a valuable asset, so it may be worth pursuing. It is important to note that each case is different, and the best course of action will depend on the specific circumstances of the case. It is recommended to seek legal advice from an experienced trademark attorney.
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