Trademarks with geographic names can be tricky.

Trademarks with geographic names can be tricky.

Trademark law in the United States is intended to protect consumers from deception. Trademark law grants a trademark owner the exclusive right to brand their products with their trademark.  If someone other than the owner of a trademark brands products with a trademark that can be considered trademark infringement.  A trademark owner can sue to stop trademark infringement and to get monetary damages for the infringement.

In the United States trademarks can be registered with the United States Patent and Trademark Office.  Registration of a trademark in the United States is not required, but is a good idea.  Registration of a trademark in the United States strengthens the trademark and grants the trademark owner additional rights.

A trademark can be just about anything used to distinguish products of one company from products made by other companies.  Symbols, words and short phrases are the most common types of trademarks.  Sometimes a company’s personality is strongly tied to a geographic region.  California wine, Wisconsin cheese, New York apples, are all examples of products that can command a higher price because the geographic region is associated with a high quality product.  Companies who want to include the name of a geographic region in a trademark must meet additional criteria to register the trademark.

The most important criteria for registering a trademark which includes a geographic name is, the products must actually come from that place.  Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), prohibits registration of a designation that consists of or comprises deceptive matter, as well as geographical indications which, when used on or in connection with wines or spirits, identify a place other than the origin of the goods.  The United States Patent and Trademark Office will refuse to register a trademark if the products are made some place other than the geographic region in the trademark.  A company that makes wine in Pennsylvania cannot register a trademark which leads consumers to believe that the wine is made in California.

Trademarks that are deceptive as to the origin of the products will be refused by the United States Patent and Trademark Office.

The next criteria that a trademark applicant must overcome is whether the geographic region is merely descriptive.

To establish a prima facie case for refusal to register a mark as primarily geographically descriptive, the examining attorney at the United States Patent and Trademark Offices must show that:

  1. the primary significance of the mark is a generally known geographic location ;
  2. the goods or services originate in the place identified in the mark; and
  3. purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark.

If a trademark is considered primarily geographically descriptive, it can be registered on the Supplemental Register or the trademark applicant can introduce evidence of acquired distinctiveness.  If the trademark applicant can present enough evidence of acquired distinctiveness than the trademark may be registered on the Primary Register.

It can be difficult to register trademarks which include names of geographic regions so it is a good idea to consult with an experienced trademark attorney to help you prepare the trademark application.

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