In my last post, I discussed the ability to trademark generic terms. This post focuses on trademarking geographic terms.
In the United States, geographic terms can be registered and protected as trademarks identifying a single commercial source if certain conditions are met.
Geographic terms have traditionally been very important in identifying the source and quality of certain goods and services. This is especially so with food and beverages. The geographic origin of foods and beverages can sometimes indicate to the buyer a significant amount of information about the nature and quality of the product. For example, a buyer may be interested in wine that comes from California simply because the wine is from California while another buyer may be interested in Australian wines simply because the wine comes from Australia.
Geographic terms that merely indicate the geographic location or origin of goods and services are regarded by the law as not being inherently distinctive marks. Therefore, geographically descriptive terms are placed in the same category as terms that are descriptive of some quality or feature of the good or service. Because a geographic adjective can be applied to a wide range of goods and services that come from a certain geographical location, such a term cannot function to identify and distinguish the goods of only one seller in that geographical location.
The Supreme Court stated that, “it is obvious that the same reasons which forbid the exclusive appropriation of generic names…apply with equal force to the appropriation of geographical names…their nature is such that they… point only at the place of production, not to the producer.”
However, there is an exception. Geographic terms can be protected as trademarks upon acquisition of secondary meaning. Secondary meaning, as it relates to geographically descriptive marks, means that the mark no longer causes the public to associate the goods with the geographical location, but causes the public to associate the goods with a particular source of the product. Also, some geographic terms have become generic names of products in many nations. For example, Americans do not expect “french fries” to originate in France.
It is also important to understand that descriptive geographical terms are in the public domain so that every seller is able to inform its consumers of the geographical origin of its goods or services. While not all places are of special importance to consumers, sellers should remain free to indicate their place of business or the origin of their goods without unnecessary risk of infringement.
For example, a potato grower can’t trademark a state’s name to indentify his/her potatoes. Such geographic terms should remain free for all sellers in that geographic location to use.