When On Earth Can You Use a Geographic Term in a Trademark?

Many businesses use their neighborhood or city in their trademark. Other business owners pay tribute to their heritage by using their home state or region. Using a geographic term, however, is often a poor trademark choice. Many of these trademarks are unable to be registered because they are descriptive or because they are deceptive.

Geographically descriptive trademarks:

Neither DURHAM PLUMBING COMPANY nor FIRST BANK OF CHAPEL HILL are able to be registered. These trademarks are considered merely descriptive because they describe the place and type of goods/services are offered. One company can’t have exclusive rights to the city name or the industry name. If your business is already using a descriptive name like this, our recommendation would be to come up with a distinctive logo or tag line and register the whole package.

Regional names, nicknames and abbreviations are treated as a variation of a place name and are often not allowed, such as New England, Midwest or Mid-Atlantic, Big Apple or NY for New York or Motown for Detroit. If the nickname isn’t well-known, it may be registered (O-TOWN for Orlando was considered not a well-known enough abbreviation to make this name descriptive).

The use of America or American in a trademark is particularly difficult. Often this term is primarily geographic (such as AMERICAN DIABETES ASSOCIATION, BANK OF AMERICA), and is not registrable because it is considered descriptive. There are cases where the use is not descriptive, such as AMERICAN GIRL for shoes.

Geographically deceptive trademarks:

Typically, an arbitrary word is a strong trademark, such as APPLE for computers. In the case of geographic terms, an arbitrary trademark may well be considered misleading and deceptive to the customer. If the proposed trademark is trying to suggest a quality of a place, but there is no other connection with that place (headquarters, manufacturing, design, etc.), the trademark is considered deceptive. If there were a connect, the trademark would likely be refused as merely descriptive. Examples of this include the following trademarks where the consumers were likely to buy the good service because of the geographic origin, and there was no actual geographic connection:

• JPK PARIS 75 for clothing;

• REAL RUSSIAN for vodka;

• COLORADO STEAKHOUSE for restaurants.

What is acceptable:

You may be able to register names of geographic places as part of a trademark if the place name is somewhat obscure (NEWBRIDGE knives was allowed because Newbridge, Ireland is not known primarily as a city in Ireland where knives are made) or the name has strong meanings other than as a place (HYDE PARK for suits was allowed, as Hyde Park can designate fine quality rather than place; HOLLYWOOD FRIES was allowed for french fries, sauces and restaurants because Hollywood can mean the entertainment industry generally, and not necessarily a place in California).

You also can register a trademark that is a composite of a place and other material, if your mark is not descriptive of a place and is not deceptive of a place. It is a fine line to walk. One example that was allowed was PARIS BEACH CLUB for T-shirts and sweatshirts. The trademark office found that Paris does not have beaches, so the use of Paris with Beach club in connection with lowly t-shirts creates a humorous mark.

If you want to work with a geographic name, also please work with a trademark attorney so you can protect your assets.