The Trademark Office rejects trademark applications for a wide variety of reasons. If the attorney reviewing your application decides to reject it, you will receive an office action. At that point, you will need to address all of the issues raised in the office action for your application to move forward. One reason your application may be rejected is if your trademark is “primarily geographically descriptive.” In this blog post, I will discuss what makes a mark geographically descriptive, and your options if you receive this type of rejection.
Primarily Geographically Descriptive Trademarks
As you may have guessed, geographically descriptive trademarks include a geographic location. The location is the place from which the products/services provided under the trademark originate. For example, NEW YORK AUTO REPAIR would be geographically descriptive for vehicle repair services provided in New York City. To prove that a mark is primarily geographically descriptive, the Trademark Office must show that:
- The primary significance of the trademark is a generally known location;
- The products/services originate from this location; and
- Consumers would believe that the products/services originate from this location.
These types of trademarks are not very distinctive, which is why the Trademark Office rejects them. They don’t distinguish the source of products/services so much as they just say where they come from. Therefore, they do not receive a broad scope of protection, at least not when they are new.
Responding to the Refusal
If you receive this type of rejection, you have a few different options. First, if you do not believe your trademark meets the 3 criteria above, then you can argue against the rejection. For example, let’s say that you do not believe the location named in your trademark is “generally known.” In that case, you might argue that it is an obscure location that very few people know about. If few people have ever heard of the location, then consumers would not make an association with that particular place. If you can convince the Examining Attorney that one of the conditions is not met, then they should withdraw this rejection.
Next, if you have been using your trademark for five or more years you can make a claim of acquired distinctiveness. This is also referred to as a Section 2(f) claim. If your claim is accepted, your application will move forward.
Finally, you may seek an amendment to the Supplemental Register. However, in order to be eligible for the Supplemental Register you will first need to show use of your trademark. If you filed under Section 1(a) on an in use basis, then you can amend without taking further action. If instead you filed on an intent to use basis, you will first need to start using your trademark and then file an Amendment to Allege Use. The Amendment to Allege Use is essentially the same as the Statement of Use, but filed before the Notice of Allowance issues. The timing of this can be tricky, so you should consult with a trademark attorney regarding your options.
Have You Received a Primarily Geographically Descriptive Refusal?
If you received an office action it is important that you respond correctly and in a timely fashion. Regardless of the issue your application faces, I would be happy to take a look for you and let you know if it is something I can fix. If you want guidance from an experienced trademark attorney please feel free to call me at (314) 479-3668, email me at email@example.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.