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.

Things are starting to get feisty in the epic battle that pits, well, boys against girls. Yes, the age-old conflict immortalized by such debates as Hot Wheels vs. Barbie Dolls has found a new manifestation surrounding a song that is ostensibly about gender roles. It’s not exactly the kind of fight that you might think of, however.

By now this story has pretty much made the social media rounds and has been extensively commented on by many of my esteemed colleagues (see here for an outstanding summary of the dispute and interesting commentary on merits of the suit, and here for a counter-viewpoint regarding fair use). For that reason, I won’t elaborate too much on the background for fear of boring readers (which I hope number more than a few) into leaving this site entirely. At the risk of being reiterative, here is the basic story. 

Trademarks on government insignia. The third and final installment where we discuss the all-important topic of whether government bodies can prevent citizens from using official government insignia on t-shirts and other novelty items. In the last post I left off with the question of whether the government should be allowed to prevent the use of official insignia by a person in the form of a parody. After all, if the government has an interest in preventing the general public from becoming confused as to the affiliation between a parodist and the government agency that this person is parodying, shouldn’t the government be allowed to bring down the hammer? 

Deeper questions on the extent of overlap between use of government symbols vs. use of commercial symbols are more easily answered by remembering that the dominant goal of trademark law is preventing consumer confusion as to source. In the private sector, if confusion about a trademark is likely to result in harm to the consumer from a counterfeit product, stopping others from using the trademark is hugely important. But in the private sector, a trademark owner does not have the unmitigated right to prevent all uses of their trademarks by others, particularly where no confusion is likely and there are greater interests at stake. These greater interests often originate in the interest of competition. Another greater interest is also found in freedom of expression. Trademark law knows these greater interests collectively as the “fair use” defense.