Examples of Weak Marks-Geographic terms are Problematic

Geographic terms: As a general rule, trademarks involving a geographical term are "weak" and are entitled to a narrow scope of trademark protection but may have a high marketing value! A mark that is composed entirely of a geographic term may be registrable only on the Supplemental Register or on the Principal Register upon proving acquired distinctiveness (that mark has become distinctive of that party's goods in commerce). A mark that is a composite mark of a geographic term and a distinctive term may be able to register on the Principal Register if the geographic term can be disclaimed and the remaining part of the composite term is distinctive.

Examples of weak geographic terms: AN INDIA VILLAGE for Textile Fabrics to be used in making men's shirts and sports coats, women's dresses, suits and shirts; men's and women's walk shorts and neckties would be subject to a limited scope of protection as a trademark. Methuen International Mills v. Rajinder Fabrics, Inc., 406 F.2d 1392 (C.C.P.A., 1969). The term `ANGLO' (meaning British) has a geographically descriptive connotation as applied to piece goods and articles of clothing and would subject to a limited scope of protection as a trademark unless it had acquired distinctiveness. Anglo Fabrics Company v. Fabriken Anglomac a/S, 282 F.Supp. 454 (D.D.C., 1968). DENVER WESTERNS is primarily geographically descriptive of western-style shirts that have their geographical origin in Denver. In re Handler Fenton Westerns, Inc., 214 USPQ 848 (TTAB 1982).

A potential trademark is geographically descriptive under Lanham Act Section 2(e)(2) if the term conveys to customers primarily or immediately geographical connotation, and the goods or services do in fact come from the place so named. If the mark in question is primarily geographically descriptive of goods or services, it may be registrable on Supplemental Register, or on Principal Register upon showing under Section 2(f) that mark has become distinctive of that party's goods in commerce. In re The Steel House, Inc., 206 USPQ 956 (TTAB 1980). An example of a mark that was not registrable because it was a geographically descriptive mark is DURANGO for chewing tobacco. In re Loew's Theatres, Inc., 226 USPQ 865 (Fed. Cir. 1985). Other examples of geographically descriptive marks are BANK OF TEXAS in Bank of Texas v. Commerce Southwest, Inc., 741 F.2d 785 (5th Cir.1984). A map of Canada was geographically descriptive in In re Canada Dry Ginger Ale, Inc., 86 F.2d 354 830 (C.C.P.A.1936).  YELLOWSTONE OUTFITTERS was georgraphically descriptive  in Warwood v. Hubbard, 218 Mont. 438, 709 P.2d 637 (1985).

A potential trademark is geographically misdescriptive under Lanham Act Section 2(e)(2) if the term conveys to customers primarily or immediately geographical connotation, and the goods or services do NOT in fact come from the place so named. If the geographical term for particular goods or services is deceptive because the geographic area is famous for some particular goods or services, the mark will not be registrable under either the Supplement Register or Principal Register even upon showing of acquired distinctiveness. If the geographic term for a particular goods or services is not deceptive but is still misdescriptive,  the mark may be registrable under either the Supplement Register or Principal Register upon showing of acquired distinctiveness. In re The Steel House, Inc., 206 USPQ 956 (TTAB 1980). An example of a geographically misdescriptive trademark is AMERICAN BEAUTY for sewing machines of Japanese manufacturer. Singer Manufacturing Co. v. Birginal-Bigsley Corp., 319 F.2d 273, 275, 138 USPQ 63, 65 (CCPA 1963). Another example of geographically misdescriptive and deceptive  is SOON CHANG as used in connection with "gochujang" hot bean paste products. The trademark term for the product is deceptive because the product does NOT originate from the Soon Chang region which is famous for certain qualities and characteristics affected by climate, ingredients, and other conditions found in that region  Daesang Corp. v. Rhee Bros. Inc., 77 USPQ2d 1753 (D. Md. 2005).

Recently the TTAB fiound KUBA KUBA primarily geographically deceptively misdescriptive of cigars, tobacco, and related products that did not originate in Cuba nor would they be made from Cuban seed tobacco. In re Jonathan Drew, Inc., 97 USPQ2d 1640 (TTAB 2011).

A potential trademark is not geographically descriptive (is arbitrary) under Lanham Act Section 2(e)(2) if the trademark in question does not convey immediate or readily recognizable geographical significance to the average consumer. In re The Steel House, Inc., 206 USPQ 956 (TTAB 1980). An example of a mark that is geographic but not geographically descriptive or misdescriptive would be the term ALASKA applied to bananas. ALASKA is entirely arbitrary and would be registrable because reasonable people would not believe that bananas had their origin in Alaska. In re Handler Fenton Westerns, Inc., 214 USPQ 848 (TTAB 1982). Other examples of arbitrary geographic marks (not graphically descriptive) are (as cited in In re Loew's Theatres, Inc., 226 USPQ 865 (Fed. Cir. 1985)(internal citations omitted) : DUTCH and DUTCH BOY for paint; HYDE PARK for men's suits; LA TOURAINE for coffee; and BRITTANIA for jeans. KENTUCKY TURF on fertilizer was found to be not primarily geographically descriptive in In re International Minerals & Chemical Corp., 147 U.S.P.Q. 262, 262 (T.T.A.B.1965). GOLDEN WEST was found to not have “specific geographic meaning" in McCormick & Co. v. Granny Goose Foods, 144 U.S.P.Q. 449, 450 (T.T.A.B. 1964). THE AMERICAN GIRL held not to be "a geographical or descriptive term"  in Hamilton-Brown Shoe Co. v. Wolf Bros. & Co., 240 U.S. 251 (1916).

Not Just Patents ® Legal Services provides a very economical package for USPTO (or international) Trademark Registration and provides domestic representation for foreign applicants. See What to Expect from a Not Just Patents ® Trademark Attorney for more information on what steps we take to protect your rights and help you develop a strong trademark.

We suggest our service and plan, a Not Just Patents Five-Part Verification as part of a Plan for A Successful Trademark:

We Verify a potential trademark is strong, available to use, and ready to register to maximize the commercial strength and minimize the weaknesses of a trademark, our process includes:

1) Verify Inherent Strength,

2) Verify Right to Use,

3) Verify Right to Register,

 4) Verify the potential mark (as currently used) Functions As A Mark, and

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.

* We don’t stop here but this is a good start!

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