Why You Shouldn’t Use a Geographic Term In Your Trademark

geographic terms in trademark registration
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You should not use a geographic term in your trademark.

Why?

A trademark must uniquely identify the source of the product or service with which it is used to consumers in interstate commerce.

This is Rule #1 in US trademark registration, and the most important word in that sentence is “uniquely.”

The very short answer to the “Why?” question is that, when your trademark revolves around a geographic term or name, it is by nature not going to be very unique.

It is, further, at worst, a deceptive practice in the eyes of the US Patent and Trademark Office (USPTO), which reviews and often refuses applications for Federal Trademark Registration.

The use of a geographic term in your trademark will lead consumers to believe that your product comes from that place.

Maybe it does—and maybe it doesn’t.

Either way, it’s a problem for your trademark registration application. The question for you will be how attached you are to that exotic-sounding place-name and how crucial it is to your branding.

Let’s discuss the issue in detail.

Geographically Descriptive & Deceptive Trademarks

The US Trademark Act (“The Lanham Act”) prohibits the registration of trademarks if they are “primarily geographically descriptive.”

The statute also prohibits the registration of trademarks that “geographically deceptive.”

A trademark registration application will be refused on either of these bases, although for slightly different reasons.

With regard to geographically descriptive marks, the problem is that they fail to uniquely identify the specific source of the goods or services that the trademark is alleged to be identifying to consumers.

By “source,” the statute does not mean geographic source. It means the individual company or individual producing or selling the goods or services.

It means you, in other words.

For example: If your company manufactures and sells robots in Detroit, you may have a difficult time registering a trademark for “The Detroit Robot Company.”

Why?

Because the trademark merely describes the product being sold and the place in which the product is manufactured.

There may be other robot companies in the Detroit area. Your company can neither monopolize the market for all robot companies in Detroit, nor may “Detroit Robot Company” specifically inform consumers that your organization has produced this or that robot.

With regard to geographically deceptive trademarks, the issue is that a trademark including a geographic term may mislead consumers into believing that a product is derived from a certain place perhaps well-known for that product—when, in reality, this may not be the case.

Back to our example: If you attempt to register “Detroit Robot Company” knowing that Detroit robots are famous the world over but you actually conduct business in California and manufacture robots in Los Angeles, this is deceptive.

Again, your trademark registration application is likely to be refused by the USPTO.

The underlying legal framework here lies in the primary difference between trademark protection and copyright and patent protection in the US:

  • Copyright and patent protection exist in US law to protect the works and inventions of creators.
  • Trademark protection exists to protect consumers’ right to know what they are buying and from whom.

The Test for Geographically Descriptive Trademarks

A trademark is geographically descriptive if:

  • The primary significance of the trademark is a generally known geographic location;
  • The goods or services represented by the trademark originate in that location;
  • And consumers would be likely to believe that the goods or services did originate in that location.

When is the primary significance of a trademark geographic?

This occurs when the trademark identifies a real and “significant” geographic region and when the primary meaning of the mark is the geographic meaning.

In other words, if the geographic term is something like “Hammer,” it may be that there is a city somewhere named “Hammer,” but it is arguable that this geographic reference is the primary meaning of the trademark.

Additionally, note that there is room for argument in the requirement that the geographic location be “generally known.”

An obscure geographic location not well-known to US consumers may pass muster.

The Test for Geographically Deceptive Trademarks

A trademark is geographically deceptive if:

  • The primary significance of the trademark is a generally known geographic location;
  • The goods or services represented by the trademark do not originate in that location;
  • Consumers would be likely to believe that they do;
  • And this misrepresentation is a material factor in a consumer’s decision to purchase the goods or services in question.

In order to prove that last factor, the USPTO Examiner issuing the refusal is required to support the refusal with evidence regarding the probable reaction of consumers to that particular geographic region when making a purchase decision of this product or service.

Evidence that a place is famous as a source of that sort of good or service weighs in favor of the refusal.

Geographic Terms and Trademark Registration: The Bottom Line

There is, naturally, much nuance in the caselaw arising from trademark registration refusals on the basis of geographic significance or deceptiveness.

However, the bottom line with regard to the use of geographic terms in trademarks is that such problems are easy to avoid from the outset.

As lawyers will always tell clients given the opportunity to advise prior to a final branding decision, if you’re making a nuance argument that your geographic term is obscure or that it is used “arbitrarily” with regard to your goods or services, you’re already spending money you didn’t have to spend on attorney’s fees.

It’s better to avoid the geographic reference in the first place.  

This is true even if your geographic term is something that you, personally, are convinced will be obscure to the average American consumer.

Without fail, the USPTO Examiner assigned to your file will run a Google search of your term and will issue a refusal of the application if any sort of geographic term shows up in the results.

The Hilla Law Firm can provide you a trademark registrability opinion of your proposed brand prior to register—and can assist you with your trademark registration application to maximize your odds of success.

Located in Detroit, we assist trademark registrants through the United States and globally with trademark application and renewal assistance.

Click the button below or complete the Contact Form here to schedule your initial virtual consultation.




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