Trademark Geographic DesignationsGenerally, trademarks with geographic designations are protectable where the trademark has attained a secondary meaning, or where they lack geographic significance or meaning in association with the goods or services. But, if the geographic designations are used primarily to describe the location where the product is made or where the service is performed, they are usually ruled unprotectible because they do no 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; 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,
  • geographically deceptive trademarks,
  • primarily geographically deceptively misdescriptive trademarks, and
  • regional certification marks.

Primarily Geographically Descriptive Trademarks

Geographically descriptive trademarks mainly describe the geographic origin of a product and are generally not registrable. The 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. This could be 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. This 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. However, if the geographically deceptive misrepresentation is not material to the decision to purchase the goods or services, then it may possibly be registrable with the USPTO.

Primarily Geographically Deceptively Misdescriptive Trademarks

A trademark will be refused as primarily geographically misdescriptive if it meets the two part test: (1) does the trademark misdescribe the goods or services, and (2) are consumers likely to believe that the misdescription is true. These trademarks are refused registration with the USPTO unless the trademark achieved a 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, even if they have a secondary meaning.

The difference between geographically deceptive and deceptively misdescriptive trademarks is associated with the registrability of the trademark. Geographically deceptive trademarks cannot be registered on the Principal or Supplemental Register, while geographically deceptively misdescriptive trademarks may be registered on the principal register if the trademark achieved a secondary meaning before December 8, 1993, and may be registered on the supplemental register if the trademark has been used in commerce since before December 8, 1993.

Regional Certification Trademarks

Regional certification trademarks are ones that 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.