Yes, you can use the name of a real place in a trademark, but it comes with limitations and challenges. The United States Patent and Trademark Office (USPTO) imposes specific rules on trademarks that include geographic names to prevent consumer confusion and ensure fair competition. Whether you can successfully trademark a place name depends on how it’s used, the connection between the place and the goods or services, and whether the name is distinctive.
Here’s what you need to know about using the name of a real place in your trademark and how to navigate the process.
Geographic Terms and Trademarks: Key Considerations
1. Primarily Geographic Descriptiveness
The USPTO generally refuses trademarks that are primarily geographically descriptive. This means:
• The place name directly describes the geographic origin of the goods or services.
• Consumers are likely to associate the goods or services with the location.
Example of Geographic Descriptiveness:
• “Napa Valley Wines” for wine made in Napa Valley is geographically descriptive and unlikely to be registered without evidence of acquired distinctiveness.
Exception: If the goods or services have no connection to the place, the name may not be considered descriptive. For example, using “Alaska” for a line of cosmetics unrelated to Alaska could be registrable.
2. Primarily Geographic Deceptiveness
Trademarks that mislead consumers about the origin of the goods or services are generally refused. If the name implies a connection to a place but the goods or services don’t originate there, the mark may be rejected as geographically deceptive.
Example of Geographic Deceptiveness:
• “Swiss Chocolate” for chocolate made in the U.S. could be refused as deceptive, since consumers might expect the product to come from Switzerland.
3. Geographic Terms with Distinctiveness
A geographic name can be registered if it has acquired secondary meaning—that is, if consumers associate the name with a specific brand rather than the location itself.
Example of Secondary Meaning:
• “New York & Company” for clothing has gained distinctiveness, as consumers recognize it as a brand rather than a description of a location.
4. Arbitrary or Fanciful Use of a Place Name
If the place name is used in a way that doesn’t describe the location or suggest a connection to it, it may be considered arbitrary or fanciful and thus eligible for registration.
Example of Arbitrary Use:
• “Dakota” for a line of watches is arbitrary because it doesn’t describe or imply a connection to the Dakota region.
Tips for Using a Place Name in a Trademark
1. Ensure the Place Is Not Descriptive of Your Product
If your goods or services are closely tied to the place, the name may be considered descriptive. To strengthen your application, ensure your use of the name goes beyond describing geographic origin.
Example:
A bakery in Paris using the name “Paris Baguette” might face hurdles without proof that the name has acquired secondary meaning.
2. Avoid Geographic Deception
Be honest about the connection between your goods or services and the place name. Misleading consumers about the origin of your product is grounds for refusal.
3. Add Distinctive Elements
Combining the place name with a distinctive element can help differentiate your trademark and make it more likely to be approved.
Example:
• “California Gold Spirits” for a distillery is more distinctive than simply “California Spirits.”
4. Build Secondary Meaning
If your trademark includes a geographic term, invest in marketing and branding to establish consumer recognition of your mark as a brand rather than a descriptor.
5. Conduct a Trademark Search
Before applying, search the USPTO database to ensure no similar trademarks exist for related goods or services.
6. Consult a Trademark Attorney
Geographic trademarks can be tricky to navigate. A trademark attorney can help assess your mark’s eligibility and guide you through the application process.
Conclusion
Using the name of a real place in a trademark is possible, but it requires careful consideration of how the name relates to your goods or services. Geographic descriptiveness, deception, and distinctiveness are key factors the USPTO evaluates when determining whether a trademark is eligible for registration.
If you’re considering using a place name in your trademark, consult with an experienced trademark attorney. They can help you determine if your mark is likely to be approved, navigate potential challenges, and ensure your brand is protected. Geographic trademarks can be powerful tools for your business when used properly.