Brand owners frequently adopt geographic terms to describe the origin or a characteristic of goods, such as NANTUCKET NECTARS for beverages from Nantucket and HYDE PARK for high end apparel. They may also adopt such terms to describe the origin of services, such as CALIFORNIA PIZZA KITCHEN for restaurant services originating in California and FASHION OUTLETS OF LAS VEGAS for shopping centers in Las Vegas. But geographically descriptive marks are generally considered weaker marks along the spectrum of trademark protection and may be difficult to enforce if found to be merely descriptive rather than inherently distinctive. While a geographically descriptive mark may acquire distinctiveness, and therefore be protected, once they are recognized by consumers as identifying the source of goods or services, establishing distinctiveness may be difficult. Therefore, when considering the use of a geographically descriptive brand, serious consideration should be given to the challenges that may arise in the enforcement and registration of such a brand. Fortunately, the U.S. Court of Appeals for the Federal Circuit (CAFC) recently provided some helpful guidance on this issue in the case of In re Newbridge Cutlery Company.
Although trademark rights arise primarily through use of the mark rather than registration, obtaining a trademark registration from the U.S. Patent and Trademark Office (USPTO) offers significant advantages, including nationwide priority and constructive notice to the public of the owner’s use and ownership of the mark. Under U.S. trademark law, however, a trademark that is “primarily geographically descriptive” or otherwise merely descriptive of the goods or services cannot be enforced unless and until such mark has acquired distinctiveness. While the USPTO may presume that a descriptive mark has acquired distinctiveness after five years of continuous use, an applicant may establish acquired distinctiveness sooner by demonstrating that the consuming public recognizes the mark as a source identifier. Sometimes, however, it may take more than five years of use to demonstrate that the mark has become distinctive. In any case, brand owners who choose geographically descriptive marks should be prepared to address the descriptiveness issue.
Determining whether a mark is “primarily geographically descriptive,” and therefore unenforceable, requires courts and the USPTO to consider whether:
The USPTO often rejects trademark applications on geographically descriptive grounds. After thirty years of silence on this topic, however, the CAFC recently reined-in the USPTO’s restrictive analysis and provided some helpful guidance to brand owners. In the Newbridge case, the CAFC reversed the USPTO’s refusal to register the mark NEWBRIDGE HOME for silverware, jewelry, desk items and kitchenware made in Newbridge, Ireland. In doing so, the court noted that the fact that Newbridge is the second largest town in county Kildare and the seventeenth largest in the Republic of Ireland “reveals nothing about what the relevant American purchaser might perceive the word ‘Newbridge’ to mean and is too insignificant to show that Newbridge is a place known generally to the American purchasing public.” According to the CAFC, the fact that Newbridge was mentioned in the Columbia Gazetteer of the World and some Internet websites was not sufficient for the USPTO to conclude that Newbridge, Ireland “is a place known generally to the relevant American public” and did not demonstrate that the mark was primarily geographically descriptive. Thus, the first prong of the test for geographic descriptiveness was not met.
In practice, marks containing geographic locations are viewed with greater scrutiny, but the Newbridge case can provide a helpful roadmap for brand owners who seek to use and register marks that contain geographic terms. In light of the CAFC’s recent decision, careful consideration should be given to the public’s perception of a geographic term before incorporating it as part of a brand to ensure that it is not merely geographically descriptive or that it can acquire distinctiveness in the near term.