The use of geographic terms or locations in trademarks is a frequent consideration among clients seeking to establish a unique and recognizable brand identity. The appeal of geographic designations often lies in their potential to create a strong association between a product or service and a particular area known for certain qualities, such as Napa for wines or Swiss for watches. However, the process of incorporating geographic terms into trademarks is subject to specific guidelines and rules to ensure fair use and avoid misrepresentation.
The Lanham Act, the primary federal trademark statute of law in the United States, outlines the conditions under which geographic terms or locations can be registered as trademarks. Section 2(e)(2) of the Lanham Act specifically prohibits the registration of trademarks that are primarily geographically descriptive, meaning they immediately convey an idea of the origin, quality, characteristics, or other features of the goods or services. A trademark is primarily geographically descriptive if its primary significance is a generally known geographic location, and consumers are likely to believe that the goods or services originate in that place, when in fact they do not. This is to prevent deception or confusion among consumers regarding the origin of goods and services.
The Trademark Manual of Examining Procedures (TMEP) further addresses the treatment of geographic terms or locations in trademarks. It reiterates the rules outlined in the Lanham Act, offering more detailed guidance on what may be considered “primarily geographically descriptive”. For example, the TMEP states that a term is primarily geographical if the primary significance of the mark is a generally known geographic location.
The most common reason why USPTO examining attorneys will refuse registration of a trademark on the Principal Register that incorporates a geographic term or location is because the mark is found to be primarily geographically descriptive or deceptively misdescriptive under the Lanham Act. This means that the term used in the mark, when viewed in relation to the goods or services, primarily conveys information about their geographic origin.
However, such a mark may still be registrable on the Supplemental Register, which exists for marks that are not yet eligible for the Principal Register but may acquire distinctiveness over time through use. A mark that is primarily geographically descriptive may be registered on the Supplemental Register if it is capable of distinguishing the applicant’s goods or services. Registration on the Supplemental Register can allow the mark owner to use the ® symbol and grants certain procedural benefits, such as the ability to bring a trademark infringement suit in federal court.
To move a trademark from the Supplemental Register to the Principal Register, the trademark owner must demonstrate that the mark has acquired distinctiveness or secondary meaning. This essentially means that in the minds of the public, the primary significance of the mark is to identify the source of the product rather than the product itself. The USPTO will consider several types of evidence to assess whether a mark has acquired distinctiveness.
It’s important to note that the evidence required by the USPTO will vary based on the specific facts of the case. Evidence that might be sufficient for one mark may not be for another, and what’s most important is that the evidence as a whole shows that the mark has become a distinctive identifier of the source of the goods or services. It’s advisable to work with a trademark attorney to prepare and submit this evidence to increase the likelihood of a successful transition from the Supplemental Register to the Principal Register.
Five Years’ Use in Commerce: One of the most straightforward ways to establish acquired distinctiveness is by demonstrating substantially exclusive and continuous use of the mark in commerce for at least five years. This claim is often backed by providing sales figures, advertising budgets, and other evidence demonstrating that the mark has been actively and continuously used.
Sales or Advertising Figures: Showing that a substantial number of products have been sold under the mark or that a significant amount has been spent on advertising the mark can help demonstrate that a large segment of the consuming public has been exposed to the mark.
Consumer Surveys: A professionally conducted consumer survey showing that a significant portion of the consuming public associates the mark with your company can provide persuasive evidence of acquired distinctiveness.
Unsolicited Media Coverage: Unsolicited news articles or other media coverage discussing your product or service can be helpful, particularly if the mark is referred to.
Declaration or Affidavit: You can submit a declaration or affidavit that explains the extent, duration, and nature of use of the mark and any other facts that would show that the public associates the mark with your goods or services.
Prior Registration: If a trademark owner has a prior registration on the Principal Register for a similar trademark used on related goods or services, this could also be accepted as evidence.
It’s important to note that the evidence required by the USPTO will vary based on the specific facts of the case. Evidence that might be sufficient for one trademark may not be for another, and what’s most important is that the evidence as a whole shows that the trademark has become a distinctive identifier of the source of the goods or services.
There are several well-known trademarks that incorporate geographic terms or locations. Here are a few examples:
Philadelphia Cream Cheese: “Philadelphia” in this trademark refers to a geographic location. However, it’s important to note that the product is not produced in Philadelphia. The term “Philadelphia” was used to associate the product with the high-quality food and dairy farming for which the city was known during the late 1800s.
Southwest Airlines: Southwest Airlines is a major U.S. airline that was originally based in the southwestern United States. Despite now operating nationwide and internationally, the company has retained its original, geographically-based name.
New York Life: New York Life Insurance Company is one of the largest mutual life-insurance companies in the United States, and it is headquartered in New York. The name “New York” in the trademark associates the business with the financial stability and reputation of New York City’s financial sector.
Arizona Beverages: Known for their line of iced teas, Arizona Beverages uses a geographic term, “Arizona”, in its trademark. Although the products are made in New York, the Arizona name associates the brand with the Southwestern imagery that is a part of its branding and marketing strategy.
Napa Auto Parts: The company was named for the famous Napa Valley in California, but it is not related to the wine industry for which the area is known. NAPA is actually an acronym for the National Automotive Parts Association.
These examples demonstrate how geographic terms or locations can be used effectively in trademarks. However, as mentioned above, it is important to comply with trademark laws and regulations to avoid misleading consumers and to prevent legal disputes.
Notable Exception To The Geographic Significance Rule
TMEP §1210.04(c) and (d) outline two exceptions to the general rule that geographic terms are not registrable under the Trademark Act. These exceptions are based on the principle that a trademark’s primary significance to the relevant consumers in the United States is not primarily geographic. These exceptions are crucial considerations for any business that wishes to use geographic terms in its branding strategy without inviting a refusal from a USPTO examining attorney.
TMEP §1210.04(c) pertains to “obscure or remote” geographic locations. This provision recognizes that some geographic names are so remote, insignificant, or obscure that they would not be recognized by the average American consumer as a geographic reference. As such, they are not primarily geographic in nature from the perspective of the relevant consuming public. For instance, a company selling tea could potentially use the name of a small, obscure village in a remote part of the world in its branding. Even though the village is a real location, its geographic significance is likely to be unrecognized by most consumers, and therefore the term could be registrable.
TMEP §1210.04(d), on the other hand, deals with the “arbitrary use” of geographic terms. Under this exception, a geographic term used in a trademark may be considered arbitrary and, thus, registrable if it has no relationship to the goods or services with which it is associated. An arbitrary geographic term does not indicate the origin of the goods or services; instead, it is utilized in a way that is unexpected or incongruous. For instance, a U.S. company making computer software could potentially use the name “Sahara” as a brand name. In this context, “Sahara” is an arbitrary geographic term because it bears no reasonable relationship to the origin or other characteristics of the software. Therefore, it would not likely be seen by consumers as indicating geographic origin.
Both these exceptions essentially pivot on the perception of the average American consumer. They acknowledge that not all geographic terms will be recognized as such, nor will they necessarily suggest to consumers that the goods or services originate from the named location. However, these exceptions are subject to the specifics of each case, the nature of the goods or services, the manner in which the mark is used, and the likely perceptions and understanding of the consumer. It is also crucial to remember that these are exceptions, and that most geographic terms will be considered primarily geographic and not registrable on the Principal Register unless they have acquired distinctiveness.
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We understand that your trademark is more than just a name or logo—it’s an essential part of your brand identity. Our trademark attorneys are dedicated to helping you protect this valuable asset. Whether you’re looking to register a new trademark, navigating the complexities of using geographic terms, or seeking to transition from the Supplemental Register to the Principal Register, our team is well-versed in all aspects of the U.S. trademark registration process, including the intricacies of the Lanham Act and the guidelines in the Trademark Manual of Examining Procedures. We can guide you through each step of the process, providing personalized advice and strategic solutions tailored to your specific needs and objectives. Contact us today to see how we can assist with your trademark registration needs, and let us help you safeguard your brand and support the growth of your business.