Trademark is Geographically Descriptive: Responding to Trademark Cease and Desist

PrimarilyGeographicallyDescriptiveTrademark_YosemiteBeerSpirits of New Merced (“Spirits”) applied to register the trademark YOSEMITE BEER for the sale of beer. But the US Patent and Trademark Office (USPTO) refused to register the mark.

The USPTO refused to register the mark because it was primarily geographically descriptive in In re Spirits of New Merced, LLC, 85 USPQ2d 1614 (TTAB 2007).

A trademark is considered primarily geographically descriptive when (1) the mark’s primary significance is a generally known geographic location; (2) the goods or services originate in the place identified in the mark, and (3) that the relevant public would be likely to make a goods/place association, that is, would be likely to believe that the goods originate in the place named in the mark. TMEP 1210.

Spirits made and sold beer in its brewpub in Merced, California, which is about 80 miles from Yosemite National Park.

A nickname for a geographic location is equivalent to official name for purposes of determining registrability of the geographic term. It did not matter that Yosemite was not a city name or  county name.

The Trademark Board found that Yosemite is a well recognized and frequently used shorthand reference for Yosemite National Park and the Yosemite region in general. Therefore, the purchasing public would be likely to believe that the beer originates in the place (Yosemite) named in the mark.

The addition of “beer” to “Yosemite” did not save the application because “beer” was weak as being a descriptive or generic term.

Responding to a Trademark Cease and Desist Letter

When evaluating the strength of the Plaintiff’s trademark, you should consider whether it is primarily geographically descriptive. That is, is the mark primarily descriptive of a geographic location?

If so, the plaintiff’s trademark may be weak and the protection afforded to it may be weak or non-existent. If the plaintiff can’t protect its mark because its primarily geographically descriptive, then the plaintiff might not be able to stop your trademark use.

The Exceptions

However, if over time customers begin to recognize a geographically descriptive mark as a source of goods/services, that mark can gain trademark protection (through acquired distinctiveness or secondary meaning). TMEP 1210.07(b).

Therefore, if the plaintiff’s mark has been long used for its goods/services and/or has otherwise become recognized in the marketplace, making claims that the mark is weak as primarily geographically descriptive may not be an effective defense.

Picking a Strong Trademark

If you are at the point of picking a trademark for your business, product, or service, you want to select a strong mark that is not primarily geographically descriptive.

See other posts in this How to Respond to a Trademark Cease and Desist series:

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