When Can Your Trademark Contain a Geographic Location?
It often makes sense to try to name your company or product after the location it comes from, especially if that place has some cache or other qualities you want customers to associate with the brand. Think Soho House, Brooklyn Brewery, Cape Cod Chips, or even the South Beach Diet. However, it may surprise you to learn that your trademark application is likely to be refused if your mark contains a well-known geographic location. That’s because the United Stated Patent and Trademark Office (USPTO) will reject marks that are known as “primarily geographic descriptive.” The reason being that there is a public interest in preventing a single company from having a monopoly on, say, whisky from Chicago with Chicago in the name.
For a trademark to be “primarily” geographically descriptive:
The primary significance of the mark is a generally known geographic location;
The goods or services originate in the place identified in the mark; and
Purchasers would likely make the association that the goods or services come from the geographic location identified in the mark.
Factors one and three go hand in hand in the sense that if the location is well known to the American public, customers would likely associate the goods or services with that location. This test was relied on earlier this year when the Trademark Trial and Appeal Board (TTAB) affirmed the USPTO’s rejection of the mark “Soho Ink” for tattoo products and services, finding that the primary significance of the mark was the well-known New York City neighborhood of SoHo, some of the applicant’s goods or services were to be offered in SoHo, and there was a presumption that the third factor was met due to the satisfaction of the first two factors.
According to this test, it would seem almost impossible to name your new company after any well-known home base. And it’s true that you might have trouble naming your new Chicago-based distillery the Chicago Whisky Co. But clearly some brands have succeeded in trademarking geographic names. How else could Soho House register its mark when Soho Ink couldn’t? It’s not because Soho House is named after the Soho neighborhood in London, which the TTAB has also found to be a generally well known location. Instead, the primary way brands are able to trademark geographic names is through “acquired distinctiveness.”
A geographically descriptive mark can acquire distinctiveness—also known as secondary meaning—when the public already recognizes an applied-for mark as identifying the source of a product or service. This is how all of the brands mentioned above succeeded in registering their marks. Perhaps the most common way of showing acquired distinctiveness is the continuous and exclusive use of the mark for at least five years. While showing this five-year use can sometimes be enough, the USPTO might also require additional evidence of distinctiveness, such as sales numbers, awards, or other publicity.
If you’re unable to prove acquired distinctiveness, another option is to register your mark on the USPTO’s supplemental register, which offers less trademark protection but still bars subsequent applicants from registering the same or similar marks.
Our firm regularly advises on trademark issues. Feel free to contact us if we can be of help.