Geographic Indicators That Are Trademarks Can Be Valuable Marketing Tools

Labels and trademarks are important sources of information for many products to show characteristics, standards, quality and authenticity. Geographic trademarks should be available for any producer in a geographic area to describe their own products and services so the USPTO is hesitant to allow trademark owners to claim exclusive use of terms that have broad potential use for many.  Examples of geographical indications from the United States include: "FLORIDA" for oranges; "IDAHO" for potatoes; "VIDALIA" for onions; and "WASHINGTON STATE" for apples.

Geographic trademarks can also be used as certification marks. Examples of geographical indicators from the United States include: WISCONSIN CHEESE MADE WITH WISCONSIN CHEESE, CERTIFIED ORGANIC BY CALIFORNIA CERTIFIED ORGANIC FARMERS, CERTIFIED ALASKA QUALITY SEAFOOD, TEXAS DEPARTMENT OF AGRICULTURE ORGANICALLY PRODUCED CERTIFIED, MADE IN NYC,   MICHIGAN APPLES, OREGON CERTIFIED SUSTAINABLE WINE,  A TASTE OF IOWA,  and   SOUTH · DAKOTA CERTIFIED.

Office Actions

Trademark registrations are very FACT dependent, they depend on the mark being proposed, how the application is filled out and if the specimens are acceptable and show the mark functioning as a mark. Whether a trademark application is correct enough and strong enough to support a trademark registration is a question of fact decided by the USPTO on a case-by-case basis.


The great variation in facts from case to case prevents the formulation of specific rules for specific fact situations. Each case must be decided on its own merits. See In re Ampco Foods, Inc., 227 USPQ 331 (TTAB 1985); In re Venturi, Inc., 197 USPQ 714 (TTAB 1977).

 

Planning for a Successful Geographic Trademark requires a plan. We suggest our service and plan-Not Just Patents Five-Step Verification as part of a Plan for A Successful Geographic Trademark:

To Verify a potential trademark is strong, available to use, and ready to register involves analyzing the facts involved with a specific mark and how it is used (or what the intent to use is). To maximize the commercial strength and minimize the weaknesses of a trademark, a potential trademark user should:

1) Verify Inherent Strength (this avoids merely descriptive, geographically descriptive and other office actions),

2) Verify Right to Use, (this avoids likelihood of confusion refusal office actions and others)

3) Verify Right to Register, (this avoids many types of refusals including merely descriptive, geographically descriptive and others that can often be predicted)

 4) Verify the potential mark (as currently used) Functions As A Mark, and (this avoids specimens refusals, trade name refusals, and others. The USPTO is looking for valid use not just any use of a mark.)

5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing. (This avoids office actions to correct incorrect IDs  which can slow down a registration. Incorrect IDs  may be corrected during the prosecution of a trademark if they do not materially alter the mark or the ID. Correcting problems before application saves time and money. Filing in a new class after an application has been submitted to cure a problem ID is the same price as a new application in that class.)

Not Just Patents® Legal Services can help many applicants avoid or overcome geographically descriptive or misdescriptive refusals, and others. Call us for help at (651) 500-7590 before letting your mark go abandoned or before letting a form filling service get you off to a bad start. Most form filling services acknowledge that they are not giving legal advice. Filing a USPTO trademark application is a legal proceeding that requires an applicant to satisfy many legal requirements within strict time deadlines.  The number of trademark applications that are abandoned for failure to respond correctly to office actions is too high, don’t let yours be one that is abandoned.


Geographically Descriptive Trademark Office Actions

These are actual office actions for marked that were disposed of in 2010 as abandonments. XXXX replaces some key identifying words and ‘city name’ and ‘state name’ replace other words to protect the identity of these applicants.

SECTION 2(e)(2) REFUSAL – PRIMARILY GEOGRAPHICALLY DESCRIPTIVE

Registration is refused because the applied-for mark is primarily geographically descriptive of the origin of applicant’s identified XXXXX goods.  Trademark Act Section 2(e)(2), 15 U.S.C. §1052(e)(2); see TMEP §§1210, 1210.01(a).

The addition of generic or highly descriptive wording to a geographic word or term does not diminish that geographic word or term’s primary geographic significance.  TMEP §1210.02(c)(ii); see, e.g., In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001) (holding MINNESOTA CIGAR COMPANY primarily geographically descriptive of cigars); In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998) (holding CAROLINA APPAREL primarily geographically descriptive of retail clothing store services); In re Chalk’s Int’l Airlines Inc., 21 USPQ2d 1637 (TTAB 1991) (holding PARADISE ISLAND AIRLINES primarily geographically descriptive of the transportation of passengers and goods by air). Applicant has disclaimed the wording, SMALL XXXXX SYSTEM, for fabric covered XXXXXs because it is generic as used in association with the identified goods.

When there is no genuine issue that the geographical significance of a term is its primary significance, and the geographical place is neither obscure nor remote, a public association of the goods with the place is presumed if an applicant’s goods originate in the place named in the mark.  TMEP §1210.04; see, e.g., In re Cal. Pizza Kitchen Inc., 10 USPQ2d 1704, 1706 (TTAB 1988) (holding CALIFORNIA PIZZA KITCHEN primarily geographically descriptive of restaurant services rendered in California); In re Handler Fenton Ws., Inc., 214 USPQ 848, 849-50 (TTAB 1982) (holding DENVER WESTERNS primarily geographically descriptive of western-style shirts originating in Denver). Applicant argues that STATE NAME for goods which emanate from STATE NAME is not geographically descriptive because it refers to the rigorous and harsh weather. The examiner finds that STATE NAME is geographically descriptive because consumers would want XXXXXs made in STATE NAME as a geographic origin due to the harsh and rigorous weather for durability and strength.

REGISTRATION REFUSED – SECTION 2(E)(2) – PRIMARILY GEOGRAPHICALLY DESCRIPTIVE

Registration is refused because the applied-for mark is primarily geographically descriptive of the origin of applicant’s goods.  Trademark Act Section 2(e)(2), 15 U.S.C. §1052(e)(2); see TMEP §§1210, 1210.01(a).

A mark is primarily geographically descriptive when the following is demonstrated:

(1) The primary significance of the mark is a generally known geographic place or location;

(2) The goods for which applicant seeks registration originate in the geographic place identified in the mark; and

(3) Purchasers would be likely to make a goods-place or services-place association; that is, purchasers would be likely to believe that the goods originate in the geographic place identified in the mark.

TMEP §1210.01(a); see In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1452 (Fed. Cir. 1987); In re Joint-Stock Co. “Baik,” 80 USPQ2d 1305, 1309 (TTAB 2006).

The applicant seeks registration of the mark “THE city name SALSA COMPANY” superimposed over a map of the [ ]of city name, state name.

A map is regarded as the legal equivalent to the words describing the place pictured.  See In re Can. Dry Ginger Ale, Inc., 86 F.2d 830 (C.C.P.A. 1936) (holding map of Canada equivalent to the word “CANADA”); TMEP §1210.02(a).  The primary significance of the word “city name” is a geographic place, namely, a [ ] of city name.  See evidence.  The record indicates that the applicant is located there, thus, it is presumed that the applicant’s goods originate there.

When there is no genuine issue that the geographical significance of a term is its primary significance, and the geographical place is neither obscure nor remote, a public association of the goods with the place is presumed if an applicant’s goods originate in the place named in the mark.  TMEP §1210.04; see, e.g., In re Cal. Pizza Kitchen Inc., 10 USPQ2d 1704, 1706 (TTAB 1988) (holding CALIFORNIA PIZZA KITCHEN primarily geographically descriptive of restaurant services rendered in California); In re Handler Fenton Ws., Inc., 214 USPQ 848, 849-50 (TTAB 1982) (holding DENVER WESTERNS primarily geographically descriptive of western-style shirts originating in Denver).

The addition of generic or highly descriptive wording to a geographic word or term does not diminish that geographic word or term’s primary geographic significance.  TMEP §1210.02(c)(ii); see, e.g., In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001) (holding MINNESOTA CIGAR COMPANY primarily geographically descriptive of cigars); In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998) (holding CAROLINA APPAREL primarily geographically descriptive of retail clothing store services); In re Chalk’s Int’l Airlines Inc., 21 USPQ2d 1637 (TTAB 1991) (holding PARADISE ISLAND AIRLINES primarily geographically descriptive of the transportation of passengers and goods by air).  Therefore, the addition of the wording “SALSA COMPANY” does not negate the primarily geographic significance of applicant’s mark, as applicant’s goods consist of “salsa” and the term “company” refers to applicant’s legal entity.  

The examining attorney notes that the term “the” is not distinctive and does not add any source-identifying significance.  See, e.g., In re The Place, Inc., 76 USPQ2d 1467, 1468 (TTAB 2005) (holding THE GREATEST BAR merely descriptive for restaurant and bar services); In re Weather Channel, Inc., 229 USPQ 854, 856 (TTAB 1985) (holding THE WEATHER CHANNEL merely descriptive for weather information services and television programming relating to weather); In re The Computer Store, Inc., 211 USPQ 72, 74-75 (TTAB 1981) (holding THE COMPUTER STORE merely descriptive for retail outlets featuring computers).

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For more information from Not Just Patents, see our other sites:      

Steps to a Patent    How to Patent An Invention

Should I Get A Trademark or Patent?

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Patentability Evaluation

Chart of Patent vs. Trade Secret

Patent or Trademark Assignments

Trademark Disclaimers   Trademark Dilution     TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Name Cease and Desist

Sample Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

How to Keep A Trade Secret

State & Federal Trade Secret Laws

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Shop Rights  What is a Small or Micro Entity?

Patent Drawings

Opposition Pleadings    UDRP Elements    

Oppositions-The Underdog    Misc Changes to TTAB Rules 2017

How To Answer A Trademark Cease and Desist Letter

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Trademark Refusals    Does not Function as a Mark Refusals

How to Respond to Office Actions

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $224 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Patent search-New invention

Patent Search-Non-Obvious

Trademark Attorney for Overcoming Office Actions Functional Trademarks   How to Trademark     

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

Valid/Invalid Use of Trademarks     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

 Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal


What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks Trademark2e.com  

Likelihood of Confusion 2d

Acquired Distinctiveness  2(f) or 2(f) in part

Merely Descriptive Trademarks  

Merely Descriptive Refusals

ID of Goods and Services see also Headings (list) of International Trademark Classes

Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals   FilingforTrademark.com

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses


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