Wednesday, May 6, 2009

Geographic Trademarks: Misdescriptive v. Suggestive

Dear Rich: What is the rule about using the name of one city for products made in another city. Can we call our beer 'Kansas City,' even if it's not made in Kansas City? I'm so glad you asked. The short answer is, "Probably not." If the USPTO thinks your brand is geographically misdescriptive, you won't be able to register it. When a trademark identifies a place other than the place from which the goods or services originate, and if consumers are likely to believe that the goods originate from that place, it is geographically misdescriptive and unprotectible. For example, Maid in Paris was considered misdescriptive of a perfume that is not from Paris. Durango was considered misdescriptive of chewing tobacco since it was not from Durango, the city in Mexico that produces tobacco products.
But wait... there's also a trademark rule that says that it's okay to use a geographic name even if your products are not from that place. For example, a car company can register Yukon for an automobile and a magazine company can register Atlantic. What's the difference between Maid in Paris and YukonMaid in Paris is deceptive because people are likely to think this is a perfume from Paris (a city known for perfume). People are not likely to believe that their Yukon was manufactured in the Yukon (not an area known for making SUVs). As for your beer brand, the Dear Rich staff thinks it might be risky to call it 'Kansas City' since the Fat City does have a reputation for beer and breweries, and consumers might believe your beer is from there. What if you moved your beer company to Kansas City? Then your mark would be geographically descriptive (and we'll talk about that in another blog post).