Upon application for U.S. trademark registration, the examining attorney will examine your proposed trade mark to ensure that it functions as a trademark. A mark will be deemed as able to function as a trademark if it is able to distinguish the goods / services of one undertaking from those of another and that it is not wholly descriptive in nature.
The U.S. Trademark Act prohibits registration on the Principal Register of marks that are primarily geographically descriptive, geographically deceptively misdescriptive or geographically deceptive of the goods or services named in the application. The tests are as follows:
Geographically Descriptive Marks – Test
To establish a prima facie case for refusal to register a mark as primarily geographically descriptive, the examining attorney 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. Note: If the mark is remote or obscure, the public is unlikely to make a goods/place or services/place association
Geographically Deceptively Misdescriptive & Geographically Deceptive Marks – Test
To support a refusal to register a mark as primarily geographically deceptively misdescriptive, the examining attorney must show that:
(1) the primary significance of the mark is a generally known geographic location;
(2) the goods or services do not originate in the place identified in the mark;
(3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark Note: If the mark is remote or obscure, the public is unlikely to make a goods/place or services/place association; and
(4) the misrepresentation is a material factor in a significant portion of the relevant consumer’s decision to buy the goods or use the services.
If you apply for U.S. trademark registration of a mark which contains the name of a place in it, this would raise geographic concerns.
The mark would be evaluated to see whether the primary significance of your mark is a generally known geographic location. We must then evaluate whether the goods originate from the place in question.
We must then look at whether purchasers would be likely to believe that the goods originate in the geographic place identified in the mark.
If the goods do NOT come from the place in question, we must look at whether the misrepresentation is a material factor in a significant portion of the relevant consumer’s decision to buy the goods or use the services.
If the geographic portion of your mark is deemed geographically deceptive/descriptive/misdescriptive, a disclaimer may be required. You will then have to disclaim the geographically descriptive wording apart from the mark as shown which means you would not be able to stop another party from using that geographic place in their mark for the same or similar goods or services.
For more information on whether your mark is eligible for trademark protection in the U.S. please contact us to conduct a trademark search.