In this article, you will discover crucial information about incorporating a geographic term into a trademark and understand why doing so may not always be the optimal choice for your business, potentially leading to a refusal under certain circumstances.
What You Should Be Aware of Regarding the Incorporation of a Geographic Term in a Trademark
Incorporating a geographic term into a trademark place you and your brand in a precarious position, as the U.S. Patent and Trademark Office (USPTO) may reject your trademark application. Refusals typically fall into two categories when trademarks include geographic terms: 1) geographically descriptive refusals and 2) geographically deceptively misdescriptive refusals.
The USPTO deems a proposed mark as geographically descriptive if
- A well-known geographic location is the primary significance of the mark.
- The products and/or services originate from the geographic location specified in the mark; and/or
- Potential consumers could easily assume the products and/or services come from the location indicated in the mark.
If a proposed mark combines the name of a geographic location with inherently distinctive elements, the applicant might avoid a refusal. However, appending terms that are merely descriptive or generic to the name of a geographic location does not typically alter the mark’s primary significance.
For instance, on September 30, 2009, an applicant sought to register for the mark “CATALINA ISLAND GRANOLA & DESIGN” for granola. The USPTO initially considered the mark geographically descriptive and issued a refusal. Yet, the Trademark Trial and Appeal Board overturned the refusal because, despite the primary significance being a geographic term, there was no evidence that the location specified in the mark was known for producing granola. In essence, the board found no product-place association.
The USPTO labels a proposed mark as geographically deceptively misdescriptive if
- A widely recognized geographic location is the primary significance of the mark.
- The products and/or services mentioned in the application do not originate from the geographic location specified in the mark.
- The public could easily believe the products and/or services come from the location indicated in the mark due to an existing association; and/or
- Misrepresentation of the mark plays a crucial role in the public’s decision to purchase the products and/or use the services.
For instance, in 2012, the Trademark Trial and Appeal Board concluded that the proposed mark “REAL RUSSIAN” for vodka was geographically deceptively misdescriptive and upheld the USPTO’s refusal. This decision was based on the primary significance of the mark being a geographic location, the products not originating from Russia, and the likelihood of the public assuming the products were of Russian origin.
Is It Advisable to Use a Geographic Term in a Trademark?
Generally, no. However, the matter is nuanced. At Jurado & Associates, P.A., we consistently recommend opting for the strongest possible mark, as these are more legally enforceable. In the realm of trademarks, a strong mark is synonymous with a distinctive one. Nevertheless, we recognize that you may choose to incorporate a trademark containing generic or descriptive terms that hold personal significance. Perhaps the place of your upbringing holds profound personal meaning, and you wish to include its name in your trademark.
While integrating a geographic term into a trademark is typically discouraged due to the elevated risk of refusal, it can be executed successfully provided the proposed mark satisfies specific criteria. If retaining a geographic term in your trademark is non-negotiable, we can assist you in navigating the necessary steps to secure approval from the USPTO for your mark.
Reach out to Jurado & Associates, P.A. today at (305) 921-0976, share the details of your case via email at [email protected], or WhatsApp at +1 (305) 921-0976. We are dedicated to helping you establish and safeguard your brand.
