Exotic pizzas, not necessarily straight from Cali.
Geography. It serves a key purpose in our lives. We use it as a point of reference to find other places. We use it in everyday conversations to describe experiences or tell rich stories. Pretty much everybody takes pride in their hometown. Finally, we also use geography to link people or things together (Napa Valley = Wine and Philly = Cheesesteaks). Some companies realize the value in including geographic designators in their names including Cisco (named for the city where the company was founded), California Pizza Kitchen (named for a chain of informal restaurants founded in California), and Motown Records (duh).
A geographic name can make a great trademark. Geographical names serve the same functions as trademarks including identifying sources, guaranteeing a particular quality, and triggering particular expectations or thoughts within a consumer (a feature which serves as a valuable business interest). However, a geographic term that is generic is not protectable. No surprises here, as any word that is generic cannot designate a particular source of goods or services because consumers see the word as a type of categorical phrase, such as “cheese steak” for a type of sandwich. Neither can a geographical name serve as a trademark if the name is descriptive of a particular location known generally to the public and the general public would believe that the goods or services offered by a company originate from the location. Again, no surprises here either as the same rules that apply to general words apply equally to geographic designations. After all, if a word simply describes a location that is known generally to be associated with goods, providing one company with a monopoly on one geographic descriptor is unfair and inhibits competition.
A geographic name can make a great trademark. Geographical names serve the same functions as trademarks including identifying sources, guaranteeing a particular quality, and triggering particular expectations or thoughts within a consumer (a feature which serves as a valuable business interest). However, a geographic term that is generic is not protectable. No surprises here, as any word that is generic cannot designate a particular source of goods or services because consumers see the word as a type of categorical phrase, such as “cheese steak” for a type of sandwich. Neither can a geographical name serve as a trademark if the name is descriptive of a particular location known generally to the public and the general public would believe that the goods or services offered by a company originate from the location. Again, no surprises here either as the same rules that apply to general words apply equally to geographic designations. After all, if a word simply describes a location that is known generally to be associated with goods, providing one company with a monopoly on one geographic descriptor is unfair and inhibits competition.
It seems to me that there could be a lot of ambiguity built into the two prong test for determining whether a particular mark is geographically connected to a location (and therefore unregistrable). The language “generally known to the public” seems to set some kind of threshold for general knowledge corresponding to a particular location.
The second prong presents some opportunity for ambiguity because what constitutes an association between a location and goods may not always be clear (true there are the easy cases, like philly cheese steaks, but what about more obscure connections such as surf city and skateboarding?). The TTAB has done its best to limit the extent of this ambiguity by creating additional rules on geographically descriptive names. For example, commonly used nicknames (Big Apple or Motown) are treated the same as the actual name of the underlying location if the public knows the location by this nickname. Also, a particular location need not be famous (Napa Valley or Yellowstone) in order to be geographically descriptive.
The limitations may work in some cases to limit the registration of geographically significant marks. However, a case can be made that the limitations still allow the TTAB’s geographic descriptiveness standard to be applied too broadly. For example, if a location from where goods or services originate is close by or not necessarily within a particular city or place that sports a nickname, and the goods or services don’t really bear a relationship to a particular place, it doesn’t make sense to restrict a mark from being registered. The trademark office appears to have an easy time rejecting marks that bear a clear relationship to the geographic location when the place is well-known, but not so much when the location is more obscure.
To see what I mean, take a look at a recent case from the TTAB where a company attempted to apply for the trademark “ASHBURN” for bed blankets, blanket throws, and lap blankets. The applicant-company hails from a little town called Chantilly, Virginia which is about 30 miles from Washington D.C. There is a town called Ashburn close by (12 miles) from where the company is located. Most people probably have no idea what Ashburn is, let alone where it is located. Indeed, this is what the TTAB said:
The second prong presents some opportunity for ambiguity because what constitutes an association between a location and goods may not always be clear (true there are the easy cases, like philly cheese steaks, but what about more obscure connections such as surf city and skateboarding?). The TTAB has done its best to limit the extent of this ambiguity by creating additional rules on geographically descriptive names. For example, commonly used nicknames (Big Apple or Motown) are treated the same as the actual name of the underlying location if the public knows the location by this nickname. Also, a particular location need not be famous (Napa Valley or Yellowstone) in order to be geographically descriptive.
The limitations may work in some cases to limit the registration of geographically significant marks. However, a case can be made that the limitations still allow the TTAB’s geographic descriptiveness standard to be applied too broadly. For example, if a location from where goods or services originate is close by or not necessarily within a particular city or place that sports a nickname, and the goods or services don’t really bear a relationship to a particular place, it doesn’t make sense to restrict a mark from being registered. The trademark office appears to have an easy time rejecting marks that bear a clear relationship to the geographic location when the place is well-known, but not so much when the location is more obscure.
To see what I mean, take a look at a recent case from the TTAB where a company attempted to apply for the trademark “ASHBURN” for bed blankets, blanket throws, and lap blankets. The applicant-company hails from a little town called Chantilly, Virginia which is about 30 miles from Washington D.C. There is a town called Ashburn close by (12 miles) from where the company is located. Most people probably have no idea what Ashburn is, let alone where it is located. Indeed, this is what the TTAB said:
“While there is no evidence that ASHBURN is anything other than a geographical location, the question here is... “how many people in this country know that?”
Not everything from Costco is from Kirkland's, mind you.
Exactly. According to the TTAB, Ashburn was just some remote and obscure location that many people would not know of and therefore would not be easily associated with blankets and the like. It should be noted for clarity that Ashburn is in no way associated with warm fleece blankets or cuddling. For these reasons, it seems likely consumers would not make an association between fleece blankets and the town itself, which is exactly what the TTAB found and why the mark was allowed to proceed to registration.
Now compare this case to Costco’s mark KIRKLAND SIGNATURE. Costco, the big-box seller of absurdly gigantic sizes for virtually all types of goods, has used the KIRKLAND SIGNATURE mark since at least 1995. Inspiration for the brand name came from the fact that Costco had its corporate headquarters in Kirkland, Washington, a city outside of Seattle (Costco now calls Issaquah, WA its home, a city only 17 miles from Kirkland). SInce 1995, Costco has filed the KIRKLAND SIGNATURE trademark for a bevy of goods. The original application was filed on April 7, 1995. Apparently, Costco was not subjected to the same type of scrutiny that the ASHBURN blanket people were greeted with, despite the fact that the facts in both cases are identical. Kirkland, WA is arguably as obscure as Ashburn, VA and there is definitely not a significant connection between Kirkland and the stuff that Costco is known for (which would be pretty much every type of item that you could think of).
Whats the great equalizer in the two cases? Could it be that now (in the days of the internet) it is much easier for the trademark office to find fault with the use of any geographic name in a trademark? Indeed, in the ASHBURN case, the only evidence that the examining attorney from the trademark office provided were some search results from Google, mainly relating to facts about the town of Ashburn. Location information alone is not enough to prove that consumers associate a town with a particular good or service. The examining attorney in the trademark office has to produce more, as in specific information tying the location and goods together (something like a wikipedia page that connects philly cheesesteaks to Philadelphia). The internet also makes this information easier to find today at least if the location you hail from or that you are trying to emulate is well known.
The takeaway from this is that you should be mindful of associating your brand with a particular geographic location, as you run the risk of having the trademark application for that name rejected (at least if you desire to have the mark on the principal register). If you hail from an obscure location and include that (or a commonly associated nickname) in the mark, then you should be clear to use the mark. If you make products that are completely unaffiliated with the associated geographic location (i.e. Sonoran-style hot sauce from some place called Sunny, bearing the name SUNNY BROOK RED), then you could register the trademark.
If the whole restriction on registering trademarks that bear a geographic identifier seems confusing, it is probably because the statutory standard contains ambiguous language and is applied less-than-consistently by the trademark office. Then again if you are an established company and have been using a particular name for 5 years or more, you probably have the ability to prove that consumers associate a particular name exclusively with your company.
Now compare this case to Costco’s mark KIRKLAND SIGNATURE. Costco, the big-box seller of absurdly gigantic sizes for virtually all types of goods, has used the KIRKLAND SIGNATURE mark since at least 1995. Inspiration for the brand name came from the fact that Costco had its corporate headquarters in Kirkland, Washington, a city outside of Seattle (Costco now calls Issaquah, WA its home, a city only 17 miles from Kirkland). SInce 1995, Costco has filed the KIRKLAND SIGNATURE trademark for a bevy of goods. The original application was filed on April 7, 1995. Apparently, Costco was not subjected to the same type of scrutiny that the ASHBURN blanket people were greeted with, despite the fact that the facts in both cases are identical. Kirkland, WA is arguably as obscure as Ashburn, VA and there is definitely not a significant connection between Kirkland and the stuff that Costco is known for (which would be pretty much every type of item that you could think of).
Whats the great equalizer in the two cases? Could it be that now (in the days of the internet) it is much easier for the trademark office to find fault with the use of any geographic name in a trademark? Indeed, in the ASHBURN case, the only evidence that the examining attorney from the trademark office provided were some search results from Google, mainly relating to facts about the town of Ashburn. Location information alone is not enough to prove that consumers associate a town with a particular good or service. The examining attorney in the trademark office has to produce more, as in specific information tying the location and goods together (something like a wikipedia page that connects philly cheesesteaks to Philadelphia). The internet also makes this information easier to find today at least if the location you hail from or that you are trying to emulate is well known.
The takeaway from this is that you should be mindful of associating your brand with a particular geographic location, as you run the risk of having the trademark application for that name rejected (at least if you desire to have the mark on the principal register). If you hail from an obscure location and include that (or a commonly associated nickname) in the mark, then you should be clear to use the mark. If you make products that are completely unaffiliated with the associated geographic location (i.e. Sonoran-style hot sauce from some place called Sunny, bearing the name SUNNY BROOK RED), then you could register the trademark.
If the whole restriction on registering trademarks that bear a geographic identifier seems confusing, it is probably because the statutory standard contains ambiguous language and is applied less-than-consistently by the trademark office. Then again if you are an established company and have been using a particular name for 5 years or more, you probably have the ability to prove that consumers associate a particular name exclusively with your company.
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