Using Geographic Terms as Trademarks

Geographic terms either identify regional origin or conjure up a geographic quality.

By , Attorney

Geographic terms (sometimes referred to as geographic designations) are naturals for trademarks because they either identify regional origin (San Francisco Sourdough bread) or conjure up a quality (the image of Prudential's Rock of Gibraltar). Geographic terms can indicate a specific location such as a street (Park Avenue), river (Rio Grande), city (Hollywood), state (Wisconsin), or mountain (Everest), or even a nickname such as Quaker State for Pennsylvania. The manner in which a geographic term is used and the type of mark—for example, trademark, certification mark, and so on—affects protection. Geographic terms are generally categorized as follows:

Descriptive. A geographic term that describes the origin, location, or source of the product or service (for example, First National Bank of Omaha for a bank located in Omaha, Nebraska) is usually considered to be weak and is not protectible unless there is a demonstration of secondary meaning. The reason for this rule is that consumers cannot differentiate the Bank of Omaha from other banks in Omaha (or New York Life from other life insurance companies in New York) without some advertising or marketing effort.

Arbitrary or suggestive. A geographic term that is used arbitrarily (for example, Atlantic for a magazine) or suggestively to conjure up a regional feeling (for example, Arizona for an iced tea drink) is considered to be strong.

Misdescriptive. When a geographic term misleads consumers into believing that the product originates from a region when it does not, it is not protectible as a trademark—for example, Danish Maid Cultured Products is geographically misdescriptive because the cultured products were not from Denmark.

Many companies use "America" or "American" as a geographic term in their trademarks (for example, American Flyer for wagons and American Express for financial services). Most uses of "America" are weak (geographically descriptive), such as Bank of America or American Diabetes Association, because the terms primarily connote American origin. Some uses, however, are strong (arbitrary or suggestive), such as American Girl for shoes, because the use of America is not primarily to connote origin. In those cases, no proof of secondary meaning is required. Some uses are geographically misdescriptive and protection is denied (that is, "barred"). For example, American Beauty for a sewing machine was barred because the sewing machine was made in Japan.

In the mid 1990s, international makers of wines and spirits successfully lobbied the United States for a special amendment to the Lanham Act that prohibited registration of geographic marks that are inaccurate as to the source of the wine. Although the amendment reiterated the existing rules regarding geographically misdescriptive marks, above, it also reassured foreign winemakers that terms such as Champagne could only refer to a bubbly wine from the Champagne region of France.

Terms that are not primarily geographical in nature (do not refer to defined locations) may be used and protected as marks if they are distinctive in the context of their use or gain a secondary meaning through extended exposure in the marketplace—for example, Southern Comfort (whiskey), Metropolitan (life insurance), and Globe (realty).

Geographical terms are also acceptable in certification marks, and the owners of such marks are entitled to full protection under the Lanham Act.

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