Trademark Law & Branding Strategy: The Perils of Using a Geographic Term in a Product Name
Trademark laws prevent the use of geographic terms without secondary meaning as trademarks. A term that primarily describes the place a product originates is not entitled to trademark protection because it is geographically descriptive. If a term uses a geographic description and the public is likely to think that it is meant to indicate that the goods or services come from that place and the goods or services do not actually come from that place, the mark can only be enforced or registered upon a showing of secondary meaning. A geographically deceptive mark cannot be registered at all.
Wine names are a good example of the use of geographic terms that are not entitled to trademark protection. The use of “California,” “Napa Valley,” or “Temecula” for example, describing popular geographic origins of wines can never be exclusively appropriated by any one vintner.
However, geographic terms that have developed secondary meaning through use in the marketplace and strong association with a particular producer can be protected against confusingly similar marks and subject to the “fair use” defense. The use of a geographic term is fair if made in good faith, in a non-trademark manner, merely to describe the geographic origin of the product. A mark can acquire “secondary meaning” through substantial and exclusive use (at least five years). Therefore, if you are unable to register your mark that includes a geographic term then, after five years of continuous use in the marketplace you can reapply for registration with the US Patent and Trademark Office.
Before naming a product consider the following:
- Does the mark have geographical significance? For example, does the mark contain any geographic terms? (for a name of a wine, does the geographic terms designate a place where wine grapes are grown or are likely to be grown in the future?)
- If your mark as a whole consists primarily of descriptive terms, whether geographic, surname, or industry-known terms, then your mark is not capable of registration as a trademark until such time as the mark acquires secondary meaning with consumers.
- If your mark contains a geographic term, the mark could be considered geographically descriptive or geographically misdescriptive. (For example, the wine naming scenario, if you are using grapes from a different geographical area than your mark suggests, you may run afoul of federal labeling requirements regarding the origin of grapes used for wine.)
- For trademark registration purposes, secondary meaning can generally be inferred from five years of continuous exclusive use of the mark in interstate commerce.
Article written by Pollie Gautsch, Esq. For additional information on trademark law and brand strategy, Ms. Gautsch can be reached at pollie@gandalegal.com and found on the web at www.gandalegal.com.
If you enjoyed this post, please consider to leave a comment or subscribe to the feed and get future articles delivered to your feed reader.
Comments
No comments yet.
Leave a comment