Geographically Descriptive and Misdescriptive Trademarks

Section 2(e) of the Lanham Act bans geographically descriptive or misdescriptive trademarks trademarks from federal trademark registration absent a showing the trademark has become distinctive.

Under section 2(e) of the Lanham Act, when an Examining Attorney determines that a trademark is primarily geographically descriptive or misdecriptive, he or she will refuse the trademark application to proceeding to a registration. Geographically descriptive terms that are part of a trademark will also not receive trademark protection.

Section 2(e) of the Lanham Act barring registration for geographically descriptive or misdescriptive trademarks

The test for whether or not a trademark is primarily geographically descriptive, and therefore not registrable, is whether 1) the term in the mark sought to be registered is a name or a place known generally to the public, and 2) the public would make a goods/place association. In other words, is the trademark the name of a place and will consumers think believe the goods are produced in that place.

An example of a geographically descriptive trademark is BAIKALSKAYA for vodka, which was refused registration by the Examining Attorney. The decision to refuse registering BAIKALSKAYA as a trademark was affirmed ex parte on appeal by the Trademark Trial and Appeal Board (TTAB). The reason why BAIKALSKAYA was refused registration is because it is a Russian word that translates into english as “from Baikal” (in trademark law, trademarks are translated into English for some aspects of the review process). Baikal is the name of a lake in south central Russia and is the world’s deepest lake. The literal translation of the trademark is “from Baikal,” therefore it was likely the consumers would believe the vodka was produced there. Since the trademark was a place and would lead consumers to believe the vodka was produced in that place, the TTAB refused to register the trademark on the grounds it was primarily geographically descriptive.

Map of Lake Baikal, the deepest lake in the world with an astonishing maximum depth of 5,712 feet.

In addition to geographically descriptive terms, deceptively geographically misdescriptive terms are cannot be registered trademarks. Geographically misdescriptive trademarks are trademarks that consist primarily of a location and consumers would likely believe the goods sold under the trademark are produced there, but they are actually not made there. The test for geographically misdescriptive trademarks is the same as geographically descriptive trademarks. In other words, it does not matter if the goods are or are not produced in the location of geographic trademarks.

Lastly, it is important to point out there is a way around geographically descriptive trademarks and a path to trademark registration under section 2(f) of the Lanham Act. In order for geographic trademarks to become registered, the trademark owner must show the trademark has acquired distinctiveness in the mind of relevant consumers. In order to show a geographically descriptive trademark has acquired distinctiveness, the applicant must show the trademark has been used by the trademark applicant exclusively, has been continuously used, and has been used for a period of year. Five years of continuous and exclusive use is prima facie evidence that the trademark has acquired distinctiveness. Section 2(f) of the Lanham Act does not apply to geographically misdescriptive trademarks.

The relevant text of Section 2(f) of the Lanham Act

Do you have a geographically descriptive trademark and are worried you will be barred a trademark application? Contact us today and we will let you know how to move forward to give yourself the best chance to receive a trademark registration.

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