If you’re reading this, you’ve likely already filed an application to register a trademark at the federal level. If that’s the case, then you’re probably here because you received an office action—i.e., a provisional refusal to register your mark—from the USPTO based on “geographic descriptiveness.”
While you may feel glum about this, take heart: it’s not uncommon for the USPTO to issue provisional refusals, whether for geographic descriptiveness, likelihood of confusion with another mark, or any number of other reasons. You may still be able to overcome the geographic descriptiveness refusal and obtain registration for your trademark, though of course this will depend on a variety of factors unique to your application and trademark.
Related: Responding To A Trademark Office Action
Be warned, though, that even if you filed the trademark application without the help of a trademark lawyer, you should almost certainly retain a lawyer at this point. Preparing an effective response to a trademark office action requires not only a thorough understanding of trademark law, but also the ability to craft persuasive arguments applying that understanding to the specific facts of your application and trademark. Most applicants simply aren’t well equipped to do this.
In the meantime, though, it’s useful to understand the basis for a geographic descriptiveness refusal and some of the arguments your lawyer may consider making in response to the refusal.
Geographic Descriptiveness Refusal
Trademark law does not permit trademarks that are primarily geographically descriptive of the underlying goods or services to be registered on the principal register.
For instance, a trademark application that sought to register the mark SEATTLE SYRUP COMPANY for syrup made in Seattle would almost certainly be refused registration, as the mark simply describes the place of origin of the goods.
The rationale for refusing registration on this basis is to ensure that one trademark holder cannot monopolize the use of a common word others may use to describe their products or services.
Challenging A Geographic Descriptiveness Refusal
There are arguments that can be used to challenge a geographic descriptiveness refusal. But they are no guarantee of prevailing. Again, much depends on the specific facts of each application.
Depending on the circumstances, often one of the more compelling arguments to be made is that the geographic term in the mark is obscure. In other words, the geographic location isn’t well known and so the public won’t perceive its primary significance to be geographic.
However, this argument won’t work for marks like SEATTLE SYRUP COMPANY or others with a geographic term that is well known. Of course there is plenty of grey area between geographic terms that are considered obscure by the USPTO and those that are not. This is an area where the help of a lawyer can prove valuable.
Another basis to consider in responding to this type of refusal is whether the trademark’s primary significance is geographic. If it is not, then the geographic descriptiveness refusal will likely not stick. Again, a good trademark lawyer can help assess whether this line of argument may be viable in the context of your particular application.
Receiving an office action based on geographic descriptiveness is a setback to be sure. But you may have one or more good arguments to deploy in response to the objection. With the help of an experienced trademark lawyer, you may succeed in overcoming the objection and obtaining registration for your trademark.