Geographically Descriptive Trademarks: What You Need To Know | Whitcomb Selinsky, PC
Why can’t I use my hometown as my brand? A trademark is part of your branding, a way to identify the source of your product or service. In many ways, the stronger the brand, the stronger the trademark. However, there are situations when common branding rules diverge from the United States Patent and Trademark Office’s (PTO) rules. One such situation is when the mark reflects the geographic source of the product or service, known as geographic descriptiveness.
GEOGRAPHICALLY DESCRIPTIVE TRADEMARKS
A geographic identifier in a business name helps tell your customers where to find you. The Osage Cafe is on Osage Street while the Ogden Theatre is on Ogden Street; the Denver Beer Co. is in Denver while the Chicago Beer Company is in Chicago; etc. This can be extremely useful when you have a storefront or your business is otherwise reliant on foot traffic. If customers can’t find you, they can’t patronize you.
Unfortunately, identifying where you are in the world can come at a cost when you try to register your business name with the PTO. The Lanham Act allows the PTO to deny registration of a trademark on the principal register when the mark,
(2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them.[1][2]
The reason for this geographic indicator carve-out is that such marks tends to be merely descriptive of the product or service. The PTO generally does not permit registration of generic or descriptive marks because doing so would preclude similar businesses from being able to describe their products. What if, for example, the PTO registered Pencil for a producer of pencils? Then no one else would be able to describe their product as a pencil. All other pencil companies would have to find alternative ways to identify their products, like wood-enveloped graphite delivery system. Don’t we all just want to call a pencil a pencil? Geographic identifiers suffer the same fate: lots of companies in Denver produce beer (thankfully), so there is a public interest in not allowing any single company a monopoly on Denver as it relates to beer or brewing.[3]
Using the name of a place in your trademark does not automatically disqualify it for being geographically descriptive. The test for determining whether a term is primarily geographically descriptive is whether:
1) the mark sought to be registered (or a portion thereof) is the name of a place generally known to the public,
2) the public would make an association between the goods or services and the place named in the mark, that is, believe that the goods or services for which the mark is sought to be registered originate in that place, and
3) the source of the goods or services is the geographic region named in the mark.
In re Newbridge Cutlery Co., 776 F.3d 854, 113 USPQ2d 1445, 1448 (Fed. Cir. 2015). In In re Oak Park Brewing Company, Inc., the mark included an indication that the brewery was in Oak Park, California. In Re Oak Park Brewing Co., Inc., 86329948, 2017 WL 914073, at *7 (Feb. 14, 2017). The TTAB concluded that the first prong of the above test was not met: that Oak Park, California, was not a place generally known to the public. In reaching its decision, the judge indicated that the evidence failed to establish that Oak Park, CA, had any significance outside of Sacramento, and compared it to Oak Park, Illinois, which is home to many significant architectural sites.
WHAT OPTIONS DO YOU HAVE?
If your mark meet the above Newbridge test, you do still have options:
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Supplemental Register. While a geographic identifier might bar you from registering on the PTO’s principal register, you can still register on the supplemental register. The supplemental register does not afford as much protection, but it gives you the ability to use the circle (R) and bars subsequent registrations by other applicants.
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Acquired Distinctiveness. If you can prove your mark has acquired distinctiveness in the market, you may be able to register on the principal register despite the descriptive nature of your mark. Great Divide Brewing Company’s Denver Pale Ale was registered on the principal register in this manner after showing that the beer had won several awards, had produced increasingly large sales each year since its inception, and that no other brewery was using Denver as an identifier at that time. Establishing acquired distinctiveness is relatively difficult and may require some creative evidence. Such marks also typically are in use for at least five years before the PTO will find acquired distinctiveness, though this is not strictly required. A useful strategy is to register on the supplemental register for five years, and then try to get your mark onto the principal register by proving acquired distinctiveness.
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Graphic Mark. You may also register your name as part of a graphic logo. You would likely have to disclaim the words in the logo, meaning you would state that you were not reserving exclusive right to the name itself, but only to the logo as a whole. This route would allow you to register your mark on the principal register. It essentially gives you a little bit of the best of both worlds: a geographic identifier, telling the world where to find you, within a brand that can be protected by federal trademark law.
Your ability to register a federal trademark for your name may turn on a nuanced issue. Including a geographic reference may function as a bar to the principal register, or you may be able to fight your way in.
Even so, such fights can be cost-prohibitive. If you do not have much invested in the name yet, consider whether a modest change would improve your registrability. If you have already built up some goodwill in the mark, consider whether your mark has acquired distinctiveness or whether you may be better served with the supplemental register.
Sources:
[1] 15 U.S.C.A. § 1052 (West)
[2] The § 1054 exception is for collective marks and certification marks, which allow registration of marks that indicate regional origin.
[3] Except when they do. See the description of Denver Pale Ale, below, which prevented Denver Brewing Co. from registering its graphic logo. Serial Number: 86741277.
