Geographic Term

Geographic Term

In this article, you will find what you need to know about using a geographic term in a trademark and learn why doing so may not always be the best move for your business, as it may pose a risk of refusal in certain circumstances.

What You Need to Know about Using a Geographic Term in a Trademark

Using a geographic term in a trademark puts you and your brand in a risky position, as the U.S. Patent and Trademark Office (USPTO) may refuse your trademark application. The USPTO generally issues two types of refusals when proposed trademarks include geographic terms: 1) geographically descriptive refusals and 2) geographically deceptively misdescriptive refusals.

The USPTO will find a proposed mark to be geographically descriptive if:

  1. A well-known geographic location is the primary significance of the mark;
  2. The products and/or services come from the geographic location included in the mark; and/or
  3. It would be easy for potential consumers to think the products and/or services come from the location included in the mark.

If a proposed mark includes the name of a geographic location but also other elements that are inherently distinctive, the applicant might be able to avoid a refusal. On the other hand, adding terms that are merely descriptive or generic to the name of a geographic location will not suffice to alter the mark’s primary significance.

On September 30, 2009, an applicant applied to register the mark “CATALINA ISLAND GRANOLA & DESIGN” for granola. The USPTO found the mark to be geographically descriptive and issued a refusal. The Trademark Trial and Appeal Board, however, reversed the refusal because, even though the primary significance of the proposed mark was a geographic term, there was no evidence that the location included in the mark was known for producing granola. In other words, the board found there was no product-place association.

The USPTO will find a proposed mark to be geographically deceptively misdescriptive if:

  1. A generally-known geographic location is the primary significance of the mark;
  2. The products and/or services identified in the application do not come from the geographic location included in the mark;
  3. It would be easy for the public to believe the products and/or services come from the location included in the mark because the location has some kind of association with the products and/or services; and/or
  4. Misrepresentation of the mark would be a key factor in the public’s decision to buy the products and/or use the services.

In 2012, the Trademark Trial and Appeal Board determined that the proposed mark “REAL RUSSIAN” for vodka was geographically deceptively misdescriptive and consequently affirmed the UPSTO’s refusal because:

  1. The primary significance of the mark was a geographic location;
  2. The products did not come from Russia; and
  3. It would be easy for the public to think the products came from Russia.

Is Using a Geographic Term in a Trademark a Good Idea?

Generally, no. However, it is not that simple. At Jurado & Farshchian, P.L., we always recommend using the strongest possible mark, as stronger marks are more enforceable. In the context of trademarks, strong means distinctive. However, we understand that you might choose to use a trademark that includes generic or descriptive terms that mean something to you. Perhaps the place you grew up in is an important part of who you are and what you stand for, and you want to include the name of that place in your trademark.

Although using a geographic term in a trademark is generally not a good idea, as it poses a high risk of refusal, it can be done successfully as long as the proposed mark meets certain requirements. If removing a geographic term from your trademark is out of the question, we can help you take the necessary steps to make sure the USPTO will allow you to register your mark. Call Jurado & Farshchian, P.L. today at (305) 921-0440 or tell us about your case via email: Romy@jflawfirm.com. We can help you build and protect your brand.

Business & Immigration Lawyer to Entrepreneurs, Start-ups, Small Business and Foreign Investors. Romy Jurado grew up with the entrepreneurial dream of becoming an attorney and starting her own business. And today, she is living proof that dreams really do come true. As a founder of Jurado & Associates, P.A., a reputable business, real estate, and immigration law firm, Romy’s practice is centered primarily around domestic and international business transactions – with a strong emphasis on corporate formation, stock and asset sales, contract drafting, and business immigration. In 2011, Romy earned her Juris Doctor degree from the Florida International University College of Law. She is fluent in two languages (English and Spanish) and is the proud author of Starting a Business in the US as a Foreigner, an online entrepreneurial guide. Contact me for a Consultation (305) 921-0976 or WhatsApp +13053968094 Romy@JuradoLawFirm.com.