Where You At? Geographic Descriptiveness in Trademarks

One common pitfall applicants face when it comes to trademarks is choosing marks that are deemed geographically descriptive. Though seemingly straightforward, this concept has significant legal implications, often serving as a barrier to trademark registration. So, what exactly is geographic descriptiveness in trademarks, and why does it matter?

What is Geographic Descriptiveness?

A trademark is considered geographically descriptive if it primarily describes the geographic origin of the goods or services offered. The U.S. Patent and Trademark Office (USPTO) defines a mark as geographically descriptive if:

1. The primary significance of the mark is a generally known geographic location, and
2. The public is likely to believe that the goods or services originate from that location.

For instance, if a company based in Napa Valley, California, applies for a trademark for the term “Napa Wine,” the mark would likely be rejected as geographically descriptive. This is because “Napa” is widely known as a region associated with wine production, and the term directly communicates the origin of the goods.

Why Are Geographic Terms Important?

The rationale behind rejecting geographically descriptive marks stems from fairness in the marketplace. Geographic terms are often considered “common property” and should be available for all businesses located in a specific region to describe the origin of their goods or services. Allowing one business to exclusively own the term “Napa” for wine would prevent other legitimate businesses in the area from truthfully describing where their wine comes from.

The Legal Standard

Geographic descriptiveness is governed by Section 2(e)(2) of the Lanham Act, which prohibits the registration of marks that are “primarily geographically descriptive” of the goods or services.

To determine whether a mark falls into this category, examiners at the USPTO apply a two-part test:

1. Is the Place Generally Known?
   The first step is to determine if the location referenced in the mark is well-known to the public. For example, “New York,” “Paris,” or “Napa Valley” are easily recognized, making marks using these terms likely to be deemed geographically descriptive. Lesser-known or obscure locations may not meet this threshold.
2. Do the Goods or Services Originate from That Place?
   The second step asks whether the goods or services are actually associated with the location named in the mark. If the applicant’s goods or services come from the location, the mark is descriptive. However, if the goods have no connection to the named place, the mark could be geographically misdescriptive, which is a different legal category and also grounds for refusal.

Exceptions: When Can Geographic Terms Be Trademarked?

While geographic descriptiveness is a barrier to registration, there are exceptions. One of the most notable exceptions is acquired distinctiveness (also known as secondary meaning). If a geographically descriptive mark has been used in commerce for a significant period of time and has come to be associated with a specific source, it may acquire distinctiveness. In this case, the mark may be eligible for trademark protection despite its geographic nature.

For instance, “American Airlines” is a geographically descriptive term, but it has acquired distinctiveness over decades of use, becoming associated with a specific airline company rather than just the general term “American.”

Additionally, geographically suggestive marks may also be registrable. These are marks that suggest, but do not directly describe, a geographic origin. For example, “Rocky Mountain High” for a type of energy drink might suggest ruggedness or altitude but does not directly describe where the product comes from. These marks are not considered descriptive in the same way and are therefore easier to register.

Geographic Misdescriptiveness

There’s also the concept of geographically misdescriptive marks, which occurs when a term implies that the goods or services come from a specific location, but they do not. For example, “Montana Jeans” for jeans made in China would likely be rejected as geographically misdescriptive. The term “Montana” falsely suggests that the jeans are from that location, misleading consumers.

Key Takeaways for Trademark Applicants

1. Avoid Common Geographic Terms: If your business name or product name uses a well-known geographic location, be prepared for the possibility that your trademark application could be rejected. Consider selecting a more distinctive or suggestive mark or moving to the Supplemental Register.
2. Acquired Distinctiveness Is an Option: If your brand has been in use for a long time and consumers associate your mark with your business, you may still be able to secure trademark protection through acquired distinctiveness.
3. Be Creative and Suggestive: Geographic suggestiveness often strikes the perfect balance. It can evoke imagery or associations without directly describing where the goods or services come from, making it more likely to be approved by the USPTO.
4. Consult a Trademark Attorney: Geographic descriptiveness can be complex, and each case is unique. If you’re unsure whether your mark will be considered geographically descriptive or misdescriptive, consulting with a trademark attorney can save you time and help navigate the application process.

Conclusion

Understanding geographic descriptiveness is crucial for any business owner seeking trademark protection. While it’s tempting to use a geographic term to evoke authenticity or local pride, doing so could limit your ability to register the mark. With careful consideration, creative naming, and sometimes, the passage of time, even a geographically descriptive mark can become protectable.