An Overview Of USPTO Geographically Descriptive Trademark Refusals

Understanding Geographically Descriptive Trademarks

The Lanham Act, also known as the Trademark Act of 1946, is the primary federal statute that governs trademarks, service marks, and issues related to unfair competition in the United States. When it comes to incorporating geographic terms into trademarks, the Lanham Act lays down specific rules.

Generally, geographic terms or place names are not allowed to be registered as trademarks if they simply describe where the goods or services are from. The reasoning behind this is to ensure that such terms remain available for all businesses in that area to use to signify the origin of their products or services.

However, there is an exception. A geographic term can be registered as a trademark if it has developed a secondary meaning—also known as acquired distinctiveness. This secondary meaning occurs when the public primarily associates the geographic term with a particular producer or source rather than just the location. Establishing this typically requires a track record of long and exclusive usage in the market.

On the other hand, if a geographic term in a trademark misleadingly suggests a false origin of goods or services—where the deception influences the purchasing decisions of consumers—then the term is considered geographically deceptive and cannot be registered under any circumstances.

Additionally, the Lanham Act’s doctrine of foreign equivalents extends these rules to foreign geographic terms. If the average American consumer would easily recognize these foreign terms as indicating a source, they are subject to the same criteria as their English counterparts. This ensures a consistent approach to geographic terms in trademarks, whether domestic or foreign, preserving the integrity of consumer understanding in the marketplace.

What Are Geographically Descriptive Trademarks?

A geographically descriptive trademark primarily indicates the geographic origin of goods or services. Such trademarks include terms that directly refer to a location related to the product, like “California Pizza Kitchen” or “Philadelphia Cream Cheese.”

Geographically descriptive trademarks cannot be registered on the USPTO Principal Register without proving secondary meaning. This requirement is rooted in trademark law’s fundamental goal: to avoid consumer confusion about the source of goods or services. For example, registering “Moroccan Pizza” for a restaurant in Texas could mislead consumers into thinking the pizza is made in Morocco, which isn’t the case.

Trademark law also aims to prevent a business from monopolizing a term that other entities might need to describe their products or services. In the “Moroccan Pizza” example, other pizzerias may need to use this term to describe their own offerings genuinely associated with Italian styles, and allowing one entity to monopolize the term could disadvantage others.

Secondary meaning occurs when the public comes to associate a trademark primarily with a specific producer, rather than with the geographic description itself. Achieving secondary meaning allows a geographically descriptive term to be registered because it identifies the goods or services as originating from a particular provider rather than merely describing them.

To establish secondary meaning, a trademark owner must often provide substantial evidence to the USPTO. This evidence might include consumer surveys, proof of significant sales, documentation of extensive advertising, media coverage, and exclusive and prolonged use of the mark in commerce. These elements help demonstrate that the term has become distinctly linked to the trademark owner in the minds of the consumer public.

This balance ensures that while businesses can protect their unique brand identities, the public retains access to use common geographic descriptors freely. Achieving secondary meaning is a critical hurdle for geographically descriptive trademarks, reflecting a careful consideration of both business and public interests in the trademark system.

Understanding Geographically Deceptive Trademarks

A geographically deceptive trademark misleads consumers about the true origin of goods or services, creating false impressions that can influence purchasing decisions. The Trademark Manual of Examining Procedure (TMEP) lays out specific criteria under 15 U.S.C. §1052(e)(3) for a mark to be considered primarily geographically deceptive.

The criteria are as follows:

  • The primary significance of the mark is a well-known geographic location.
  • The goods or services do not actually originate from the location indicated by the mark.
  • It is likely that consumers would believe the goods or services come from the geographic place named in the mark.
  • This misunderstanding would significantly affect the consumers’ decision to purchase or use the goods or services.

For instance, a company in Montana using the trademark “French Wines” for products not produced in France could be considered geographically deceptive. Consumers might buy these wines under the false belief they are from France, a region famed for its vineyards, and this belief is crucial in their purchase decision.

Such trademarks are barred from registration on the USPTO principal register, even if they achieve secondary meaning. The prohibition against registering geographically deceptive marks aligns with the fundamental objectives of the Lanham Act, which seeks to prevent consumer confusion and promote fair competition by ensuring trademarks do not mislead about the nature, qualities, or geographical origin of goods or services.

This differentiation is key: while geographically descriptive marks can secure registration through secondary meaning, geographically deceptive marks are entirely excluded from registration due to their potential to deceive consumers. This ensures that the integrity of geographical indications in the marketplace is maintained, protecting consumers and fair business practices alike.

Understanding Geographically Deceptively Misdescriptive Trademarks

A geographically deceptively misdescriptive trademark falsely suggests that goods or services come from a specific geographic location when, in fact, they do not. Unlike geographically deceptive trademarks, for a mark to be considered geographically deceptively misdescriptive, the geographic misrepresentation does not need to be a material factor affecting the consumers’ purchasing decisions.

According to the Trademark Manual of Examining Procedure (TMEP), a trademark falls into this category under 15 U.S.C. §1052(e)(3) if:

  • The primary significance of the mark is a well-known geographic location.
  • The goods or services are not actually produced or provided in that location.
  • Consumers are likely to believe that the geographic location relates to the origin of the goods or services, even though this is not true.

It is important to note that even if these types of trademarks acquire secondary meaning—meaning the public recognizes the trademark as identifying the source of the product rather than just the geographic location—they still cannot be registered if they are found to be primarily geographically deceptively misdescriptive. This is in stark contrast to merely geographically descriptive marks, which can become registrable with secondary meaning.

The prohibition against registering such trademarks is grounded in the principles of consumer protection and fair competition. Allowing the registration of a geographically deceptively misdescriptive mark could confer an unfair competitive edge on its owner and mislead consumers about the origins of the product or service, contravening the aims of trademark law. This policy is designed to maintain transparency and trust in the marketplace by preventing false geographic implications that could influence consumer perceptions and choices.

Understanding Regional Certification Trademarks

Regional certification trademarks are a special type of certification trademark that specifically certifies the geographic origin of goods or services, according to the Trademark Manual of Examining Procedure (TMEP). Unlike ordinary trademarks, which indicate the source of a product or service, certification trademarks verify certain qualities or attributes of the product, such as its origin, material, mode of manufacture, quality, or other characteristics.

The owner of a certification trademark is responsible for maintaining the standards associated with the mark and ensuring that any party using the mark meets these standards. This ensures that the public can trust that products bearing the certification trademark genuinely meet the specific attributes or qualities certified by the mark.

Regional certification trademarks, therefore, are used not to indicate who made a product, but to certify that the goods or services originate from a particular geographic area and possibly adhere to certain quality standards or production criteria typical of that region.

For example, “Energy Star” is a well-known regional certification trademark that certifies appliances that meet certain energy efficiency standards. Similarly, “Fair Trade Certified” certifies the product has gone through a rigorous, and globally recognized sustainable sourcing certification program that improves the livelihoods, protects the environment, and builds resilient, transparent supply chains.

The value of regional certification trademarks lies in their ability to assure consumers about the authenticity and quality of products associated with particular geographic regions. These trademarks protect both producers, by preventing others from falsely marketing non-compliant products under the same regional name, and consumers, by ensuring that products bearing the mark meet expected standards.

It’s crucial to understand that the owner of a certification trademark does not engage in producing the goods or providing the services that the mark certifies. Instead, they oversee the certification program, allowing only those producers who adhere to the prescribed standards to use the mark. This separation helps maintain objectivity and integrity in the certification process, preserving the trust and value associated with regional certification trademarks.

Contact Our Trademark Attorneys

Receiving a USPTO office action can be challenging. However, this isn’t the end of the process. Our trademark attorneys are experienced in addressing issues raised in these office actions, including likelihood of confusion, descriptiveness, surname, geographic, ornamental, and other refusal grounds.

We focus on creating strategic responses to align your trademark application with USPTO guidelines. An office action is an opportunity to improve your application, not a final refusal. Contact us to see how we can help you move forward with your trademark registration.