Can Trademarks Be Primarily Geographically Descriptive?

[author: Daniel H. Bliss of Howard & Howard]

Suppose that you want to register a trademark that identifies a source of goods or services for your business.  What if the trademark describes a geographical area such as eastern?  Should you register your trademark with the U.S. Patent and Trademark Office?  Can you obtain a registration from the U.S. Patent and Trademark Office?  The answer is YES! if the mark is not primarily geographically descriptive.

Section 2(e)(2) of the Trademark Act, 15 U.S.C. §1052(e)(2), prohibits registration on the Principal Register of a mark that is primarily geographically descriptive of the goods or services named in the application. See T.M.E.P. §1210.01(a). The test for determining whether a term is primarily geographically descriptive is whether:

1. the mark sought to be registered (or a portion thereof) is the name of a place generally known to the public;
2. the public would make an association between the goods or services and the place named in the mark, that is, believe that the goods or services for which the mark is sought to be registered originate in the place; and
3. the source of the goods or services is the geographic region named in the mark.

In re Newbridge Cutlery Co., 776 F.3d 854, 113 U.S.P.Q.2d 1445, 1448-1449 (Fed. Cir. 2015); see also In re Societe Generale des Eaux Minerals de Vittel S.A., 824 F.2d 957, 3 U.S.P.Q.2d 1450 (Fed. Cir. 1987).  The relevant public is the purchasing public in the United States of the types of goods or services identified in the application. Newbridge, 113 USPQ2d at 1449.

For such an analysis, the Examining Attorney must evaluate each mark on a case-by-case basis. The Examining Attorney must take into consideration the entire context, the type of goods or services at issue, the geographic origin of the goods or services and, most importantly, the overall commercial impression of the mark at issue.

If there is a nuance, even a subtle one, this may remove a mark from the primarily geographically descriptive category. This is a difficult analysis and the Examining Attorney has to determine whether the overall commercial impression is something other than primarily geographic – for example, due to double meanings or shades of suggestive meanings.

In the recent case of In re Buffalo Bayou Distilleries, LLC, (T.T.A.B., not precedent) (July 30, 2018), Buffalo Bayou Distilleries, LLC. (“Buffalo”) sought registration for the mark EAST END for alcoholic beverages, except beers, ales, stouts, ciders and wines, and alcoholic beverages, namely, distilled spirits, vodka in International Class 33.  The Examining Attorney denied registration for the mark as primarily geographically descriptive under Trademark Act Section 2(e)(2).  Buffalo responded that the mark has no geographical significance.  However, the Examining Attorney introduced evidence that Buffalo is located in Houston’s Historic East End, just two miles from Downtown Huston.  After being denied registration, Buffalo appealed to the Trademark Trial and Appeal Board (“TTAB”).  The TTAB reviewed the record as a whole and remain unconvinced that “East End” primarily identifies a geographic location in Houston that is “known generally to the American purchasing public.”  See Newbridge Cutlery, 113 U.S.P.Q.2d at 1450.  The TTAB found that the record reflects that “East End” can refer to numerous geographical locations, suggesting that its primary significance is not referring to the area in Houston, Texas.  Thus, the TTAB held that the mark was registrable and reversed the Examining Attorney, thereby allowing registration of the mark.

Trademarks can be denied registration based on the mark being primarily geographically descriptive.  As such, you should file an application to register the trademark when the overall commercial impression is something other than primarily geographic – for example, due to double meanings or shades of suggestive meanings.  You should be able to have the trademark application examined and obtain a registration.  However, it is still possible that once the application is published for opposition, a third party may attempt to oppose the mark.  However, any opposition should be dismissed if the opposition is based on the overall commercial impression being something other than primarily geographic.  If the opposition, is based on other grounds, then you will be forced to proceed through an opposition if settlement is not possible.  Ultimately, you should be able to obtain your registration.