Are you considering a trademark that may be “geographically misdescriptive”?
Okay, perhaps an unfair trademark question – what is a “geographically misdescriptive” trademark anyway? A trademark may be refused registration at the USPTO if the trademark examining intellectual property attorney decides it is geographically misdescriptive under Trademark Act Section 2(e)(3), 15 U.S.C. §1052(e)(3). In considering whether a trademark is geographically misdescriptive and issuing a refusal, the Trademark Office considers and must establish that (1) the primary significance of the mark is a generally known geographic location, (2) the consuming public is likely to believe the place identified by the mark indicates the origin of the goods bearing the mark, when in fact the goods do not come from that place, and (3) the misrepresentation would be a material factor in the consumer’s decision to purchase the goods.
I have often advised clients against adopting such a mark because of the possibility of a geographically misdescriptive refusal. However, a recent (but unfortunately non-precedential, meaning non-binding) decision by the Trademark Trial and Appeal Board issued on January 14, 2011 in the case of In re Conair Corporation, held that Conair’s application for registration of the word mark LONDON SOHO NEW YORK, in respect of “cosmetic bags, namely, cosmetic bags sold empty, cosmetic organizers sold empty, hang-up cosmetic bags sold empty and cosmetic travel bags sold empty” was not geographically misdescriptive when used in connection with those goods.
The TTAB found that the record did not support a goods/place association between the goods and the two Soho neighborhoods or, with the cities of London and New York. The TTAB further found that even if such an association had been demonstrated, the Office failed to prove the third requirement for a geographically deceptively misdescriptive refusal. To the extent some inference may be made regarding any renown for fashion generally, this is not sufficient to find that any of those places were renowned for cosmetic bags such that believing that the cosmetic bags originate in any of the locations represented in the mark is a material factor in a consumer’s decision to purchase these goods. Thus, the examining attorney failed to make a prima facie case that the mark LONDON SOHO NEW YORK was primarily geographically deceptively misdescriptive.