Geographic Descriptions as Trademarks

March 1, 2018

 

 

 

In the last The Name Game Post, found here, we focused on proper names as a trademark.  The focus of this post is on the use of a geographic description in conjunction with a tradename.  Living in a well-known area has its pluses and minuses.  There is an immediate connection to the place when its name is used in connection with a product or service.  However, that use is often descriptive at best when used solely as a source identifier. The issue is even worse if you use a geographical description for a tradename and the product is not from that area (in that scenario, trademark registration is rarely granted, and this post will not detail this path).

 

So what’s the big deal? Well, in most well-known areas, there are hundreds of thousands of people, if not millions. Why should one person be allowed to used that area’s name exclusively for their own benefit.  Also, it is only being used to describe where the goods or services or sourced from. It does little more than help to describe those goods and services.  Not really the strong name that the federal trademark registration system was created to protect.

 

Take for instance, Charleston Grits or New York City Pizza. Neither name really leaves much to the imagination.  Further, what else is provided by that name other than a geographic description? Nothing. The answer is nothing.  Because of this, the USPTO seldom allows registration of these trademarks. In order to gain registration, these marks must go through the “acquired distinctiveness” path that proper names must go through (see The Name Game Part II).  However, there is a big difference between proper names and geographic descriptions.

 

Often our given names, or proper names, are distinct and exclusive in nature.  Other than super common names, most people find few in their area, country, or the world for that matter, with a similar name. While USPTO registration of your proper name in connection with your goods and services is tough, it is not as likely that someone would use your name in connection with their goods and services (unless you have a super common name).  But that is not the same for geographic descriptions. 

 

 Geographic descriptions can be used by everyone in that area, and even people outside of that area. You would face competition from people in your backyard, as well as potentially from afar.  All of the brand equity you build into your brand could be used by someone else. Sure you can send a cease and desist letter and claim priority for first use. But if it is a descriptive mark, you won’t have much of a leg to stand on. So why build all of that equity in a name you likely don’t, can’t, and won’t own?

 

 There are some instances in which the geographic description is a part of the overall trademark, such as New York Flying Pizza Pies. Such names and use may be easier to gain USPTO registration. Also, it is less likely someone would use the name due to its uniqueness, and if they did, you have more footing to bring an infringement action. But in general, using geographic descriptions as a tradename is risky, and should be given careful thought. Don’t build a brand everyone can use.

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