A geographically deceptively misdescriptive trademark (which is different than a primarily geographically descriptive trademark) is ineligible for federal registration with the United States Patent and Trademark Office (USPTO) on either the Principal Register or Supplemental Register. The Lanham Act (which governs trademark registration in the US) specifically prohibits the registration of trademarks that are “primarily geographically deceptively misdescriptive” of the products/services with which they are used.
Is My Trademark Geographically Deceptively Misdescriptive?
The USPTO must refuse registration of your trademark if it believes that your mark is geographically deceptively misdescriptive. But, how do you know if your mark falls into that category? Well, the USPTO uses the following test to determine whether a trademark is geographically deceptively misdescriptive:
- Is the primary significance of the mark a generally known geographic location?
- Do the products/services not originate in the place identified in the mark?
- Would purchasers believe that the products/services do originate in the geographic place identified in the mark?
- Would the misrepresentation be a material factor in a purchaser’s decision to buy the products/services?
If the answer to all four of these questions is “yes,” then the USPTO will refuse registration of your trademark on the basis that it’s geographically deceptively misdescriptive. If you submit a trademark application attempting to register such a trademark, the examining attorney will issue a trademark office action indicating why he/she believes that your mark is geographically deceptively misdescriptive and, therefore, not entitled to registration.
Examples of Geographically Deceptively Misdescriptive Trademarks
Let’s pretend you want to register the name HAVANA HEAVEN as a trademark for cigars. However, your cigars are produced in Honduras and not Havana, Cuba. Would the USPTO find your trademark to be geographically deceptively misdescriptive? Well, HAVANA is a generally known geographic location since it’s the capital of Cuba. Second, your cigars do not originate in Havana, Cuba. Third, purchases would likely believe that your cigars do originate in Havana since Cuba is well-known for producing cigars. And, fourth, the misrepresentation in the HAVANA HEAVEN mark would be a material factor in a purchaser’s decision because Cuba is famous for producing highly desirable cigars. In other words, cigar smokers specifically seek out Cuban cigars due to their high-quality and unique flavor. As such, HAVANA HEAVEN is a geographically deceptively misdescriptive trademark when used in connection with the advertising and sale of cigars that aren’t produced in Cuba.
A second example of a geographically deceptively misdescriptive trademark would be PARIS LUXE FASHION DEPOT for a retail store featuring hats and shoes that are produced in China. Why? First, Paris is a generally known geographic location (the capital of France). Second, the hats and shoes do not originate in Paris, France. Third, purchasers would likely believe that the shirts and shoes featured in the retail store do originate in Paris since France is well-known for its fashion industry and luxury fashion houses. And, finally, the misrepresentation in the PARIS LUXE FASHION DEPOT mark would be a material factor in a purchaser’s decision to patronize the retail store because Paris is famous for producing luxury clothing items and fashion accessories. In other words, consumers of high-end clothing would be particularly interested in shopping at a retail store that sells clothing and accessories manufactured in France or are associated with a French designer. So, PARIS LUXE FASHION DEPOT would not be entitled to registration if it was used in connection with a a retail store featuring clothing and accessories made in China.
Do You Have Questions or Concerns?
I’m US trademark attorney Morris Turek. If you’re unsure whether the name you want to register is geographically deceptively misdescriptive, or if you’ve received an office action indicating that your trademark application is being rejected on the basis that your mark is geographically deceptively misdescriptive, please reach out to me at your earliest convenience for your completely free consultation. You can call me at (314) 749-4059, email me at firstname.lastname@example.org, or send me a short message using the contact form located below. I look forward to speaking with you soon.