Trademarks Containing Geographic Terms

Federal and State trademark law generally frowns upon providing protection for trademarks which contain terms which are geographically descriptive. Public policy favors allowing all within a specific geographic region to use descriptive geographic terms in order to inform the public of the origin of the goods or services bearing the trademark.

On the one hand, businesses like to include geographic terms, such as Miami, as part of their trademark. For instance, what better way to inform the public that you sell beach chairs in Miami then to use the phrase "MIAMI BEACH CHAIRS" as your trademark. The phrase immediately informs the public that the beach chairs are sold, are made, or otherwise originate from Miami. Since Miami is widely known for its beaches, it follows that the public would be interested in purchasing beach chairs originating from Miami. Perfect, right? Not exactly.

What makes the phrase "MIAMI BEACH CHAIRS" such a great marketing tool, also makes it a horrible trademark. For instance, what if your competitor opens a store across the street and also chooses to use "MIAMI BEACH CHAIRS" as his or her trademark. Public policy dictates that he or she has a right to inform the public that he or she sells beach chairs that originate or have some connection with Miami. Sounds obvious, right? So you get upset and decide to use "MAGIC CITY BEACH CHAIRS". Have you gained an edge? How about "SOUTH FLORIDA BEACH CHAIRS"? "LINCOLN ROAD BEACH CHAIRS"? "SOBE BEACH CHAIRS"? All of your secondary choices may be problematic.

For instance, under trademark law, other locations, aside from city names, are viewed as geographically descripive. A geographic location may be any term identifying a country, city, state, continent, locality, region, area or street.

Region. A particular, identifiable region (e.g., "Midwest" or "Mid-Atlantic") is a geographic location.

Nicknames. A geographic nickname (e.g., "Big Apple" or "Motown"), or an abbreviation or other variant of the name of a geographic location is treated the same as the actual name of the geographic location if it is likely to be perceived as such by the purchasing public.

Adjectives. The adjectival form of the name of a geographic location is considered primarily geographic if it is likely to be perceived as such by the purchasing public.

Maps. A map or outline of a geographic area is also treated the same as the actual name of the geographic location if it is likely to be perceived as such.

Coined Locations. The mere fact that a term may be the name of a place that has a physical location does not necessarily make that term geographic. For example, names of amusement parks, residential communities, and business complexes, which are coined by the applicant, should not be refused. The case law involving these fact patterns depends on whether the person or entity that coined the phrase enforces same within a reasonable time period.

Not suprisingly, the United States Patent and Trademark Office has established a test for geographically descriptive marks:

To establish a prima facie case for refusal to register a mark as primarily geographically descriptive, the examining attorney must show that:

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

(2) the goods or services originate in the place identified in the mark; and

(3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark. Note: If the mark is remote or obscure, the public is unlikely to make a goods/place or services/place association

Under this test, all of the proposed names listed above would be found to be primarily geographically descriptive. As such, they would be unlikely candidates for federal or state trademark registration. There are exceptions to every rule. The biggest exception is that if the geographically descriptive phrase has acquired "secondary meaning." This essentially means that the public no longer views the phrase as primarily descriptive because of long term use, overwhelming advertising, and the like. As a general rule, however, geographic terms should be avoided for trademarks. The geographic terms could be used as accompanying slogans or otherwise apart from the trademark.