What if my mark is the name of a place?
Updated: Nov 14, 2021
One of the most common reasons for refusal of U.S. trademark applications is that the mark is geographically descriptive. This happens in 2 main situations:
(1) The applied-for mark consists entirely of wording that refers to a specific place
(2) The applied-for mark consists entirely of wording that refers to a specific place and wording that is either descriptive, generic, or both.
Descriptive wording tells us something about a characteristic of the products or services that the mark is used with. Examples of descriptive wording would be words like DELICIOUS in a mark used with cupcakes or SMART in a mark used with phones. Generic wording tells us directly what the particular products or services are. Examples would be words like HOSPITAL for hospital services or CLOTHING for t-shirts. The first type of mark would be something like CALIFORNIA used with glasses sold by a business located in California. The second type of mark would be something like CALIFORNIA GLASSES, again, used with glasses sold by a business located in California.
There are 3 key things that USPTO Examining Attorneys look for when they are deciding whether to refuse an application on grounds that the mark is geographically descriptive:
(1) What is the primary significance of the mark? If it is a known geographic
location, then this is a red flag.
Sometimes the wording is clearly a known geographic location. Names of U.S. States like New York or major cities like Atlanta fall into this category. But people are often surprised to learn that even nicknames or well-known abbreviations for specific locations are refused. If your business is located in New York City, and you include the wording THE BIG APPLE in your mark, that probably won’t help you avoid this refusal. That’s because consumers commonly understand that the phrase refers to New York City.
The location might be as specific as a street name, so long as the street is well known, such as RODEO DRIVE. On the other hand, the location can be much broader in scope. Marks that include words that identify regions are also a common problem. For example, the wording PACIFIC NORTHWEST appears in many marks for breweries that operate in that region of the U.S.
(2) Do the applicant’s products or services actually come from the place that is
named in the mark?
Technically, the USPTO terminology for this concept is the “geographic origin” of the products or services. Some of the main ways that products or services “originate” from a particular place include being (a) manufactured, (b) produced, or (c) sold in that place. While those are some key considerations, there are actually many factors, and even some uses that don’t quite fit into the categories above can still be problematic. For example, it isn’t necessary that the entire product “originate” in the place identified in the mark. Owners of the mark BAIKALSKAYA (meaning “from Baikal’) received a refusal of their mark because it was used with vodka made from the water of Lake Baikal, and the business was located in a city near Lake Baikal.
Similarly, it isn’t necessary for all of the applicant’s services to be provided only within the place identified in the mark. If the services are provided both in the place named in the mark and in other locations, that can still be a problem. The USPTO refused registration of the mark CALIFORNIA PIZZA KITCHEN used with restaurant services because some of the restaurant locations were in California. The fact that the chain had restaurant locations in other states did not get them around this refusal.
What if your products or services don’t actually originate in the place that is named in the mark? Does that mean you’re free and clear? Not necessarily. You may have set yourself up for a slightly different refusal: the “geographically deceptive” refusal or the “primarily merely geographically deceptively misdescriptive mark” refusal. That’s both a mouthful and a topic for a different day; but you can think of them as close cousins of this refusal. A lot of the same fairness issues (I’ll discuss below) apply to all of them.
(3) Would consumers likely believe that the applicant’s products/services come
from the place that is named in the mark?
For the USPTO Examining Attorney, this is often the easiest part of the analysis. That’s because of an interesting evidentiary rule. If the Examining Attorney can show that (a) the primary meaning of the wording in the mark is a geographical location + (b) the location is “generally known” and not some obscure or remote place + (c) the products or services listed in the application actually originate in or near the location, there’s a presumption that consumers would associate those products/services with the place named in the mark and believe they came from that place. This means that most of the time if that USPTO Examining Attorney can answer “Yes” to the first and second questions above and provide some evidence, then the answer to the third question is also yes, and they don’t need any additional evidence to issue the refusal.
Why does the USPTO refuse geographically descriptive marks?
Essentially, this comes down to a fairness issue. Remember: a mark is a source identifier. Its whole job is to point consumers to the source of particular products or services. This is a huge timesaver for all of us. When we love a product, we can easily recommend it to our friends and family by showing or telling them the mark that the product is sold under. If we have a really bad customer service experience, we also warn each other to avoid the source of those services by sharing the mark they were provided under.
The problem with geographically descriptive marks is that there may be multiple businesses in the same city, state, region, etc. that provide the same products or services. In theory, they should all have equal access to the wording that explains what they do or what products they offer and where they are located. There are probably a lot of dentists in Atlanta who want their clients or prospective clients to understand that they provide dental services in this particular city. The wording ATLANTA DENTISTS doesn’t necessarily point us to a single provider of dental services. And we would feel pretty uncomfortable about letting only one dentist use the wording ATLANTA DENTISTS in their mark.
So is it impossible to register a mark that includes wording that identifies a particular place?
Not necessarily. Depending on the specific circumstances, there may be ways to avoid the refusal or strong arguments to overcome the refusal. This is one of the benefits of working with a knowledgeable trademark attorney – they should be able to help you navigate around such obstacles to registration. The best approach will vary depending on the specific circumstances.
This information was posted on November 13, 2021 and was accurate as of the date of writing. However, the law changes frequently, and readers should not rely solely on general online information but instead should consult a licensed attorney by asking questions about their specific issues when they need legal advice.