1210.02   Primarily Geographic Significance

The significance of a mark is primarily geographic if it identifies a real and significant geographic location and the primary meaning of the mark is the geographic meaning.

1210.02(a)   Geographic Locations

A geographic location may be any term identifying a country, city, state, continent, locality, region, area, or street.

Region. A particular, identifiable region (e.g., "Midwest" or "Mid-Atlantic") is a geographic location. In re Pan-O-Gold Baking Co., 20 USPQ2d 1761 (TTAB 1991) (holding that the primary significance of "New England" is geographic). On the other hand, vague geographic terms (e.g., "Global," "National," "International," or "World") are not considered to be primarily geographic, though they may be merely descriptive or deceptively misdescriptive under §2(e)(1). See TMEP §1209.03(o).

Nicknames. A geographic nickname (e.g., "Big Apple" or "Motown"), or an abbreviation or other variant of the name of a geographic location, is treated the same as the actual name of the geographic location, if it is likely to be perceived as such by the purchasing public. See In re Spirits of New Merced, LLC, 85 USPQ2d 1614 (TTAB 2007) (holding that "Yosemite" – a well recognized and frequently used shorthand reference to Yosemite National Park and the Yosemite region in general – conveys a readily recognizable geographic significance); In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998) (CAROLINA APPAREL primarily geographically descriptive of retail clothing store services, where the evidence showed that "Carolina" is used to indicate either the state of North Carolina or the state of South Carolina). But see In re Trans Cont'l Records, Inc., 62 USPQ2d 1541 (TTAB 2002) (O-TOWN found to be a "relatively obscure term" that would not be perceived by a significant portion of the purchasing public as a geographic reference to Orlando, Florida).

Adjectives. The adjectival form of the name of a geographic location is considered primarily geographic if it is likely to be perceived as such by the purchasing public. See In re Joint-Stock Co. "Baik," 80 USPQ2d 1305 (TTAB 2006) (BAIKALSKAYA – the Russian equivalent of "from Baikal" or "Baikal’s" – held primarily geographically descriptive of vodka); In re Jack’s Hi-Grade Foods, Inc., 226 USPQ 1028 (TTAB 1985) (NEAPOLITAN held primarily geographically deceptively misdescriptive of sausage emanating from the United States, where the term is defined as "of or pertaining to Naples in Italy"); In re BankAmerica Corp., 231 USPQ 873 (TTAB 1986) (BANK OF AMERICA held primarily geographically descriptive).

Maps. A map or outline of a geographic area is also treated the same as the actual name of the geographic location if it is likely to be perceived as such. See In re Canada Dry Ginger Ale, Inc., 86 F.2d 830, 32 USPQ 49 (C.C.P.A. 1936) (map of Canada held to be the equivalent of the word "Canada"). But see In re Texsun Tire & Battery Stores, Inc., 229 USPQ 227, 229 (TTAB 1986) (holding that if the depiction of a map is fanciful or so integrated with other elements of a mark that it forms a unitary whole, then the map should not be considered primarily geographically descriptive).

Coined Locations. The mere fact that a term may be the name of a place that has a physical location does not necessarily make that term geographic under §2(e)(2). For example, names of amusement parks, residential communities, and business complexes which are coined by the applicant, must not be refused. In re Pebble Beach Co., 19 USPQ2d 1687 (TTAB 1991) (17 MILE DRIVE not a geographic term, where it refers to a specific location wholly owned by applicant, and was coined by applicant to refer both to applicant’s services and the place where the services were performed).

1210.02(b)   Primary Significance

To support a refusal to register geographic matter, the Trademark Act requires that the mark be primarily geographic, that is, that its primary significance be that of a geographic location. 15 U.S.C. §§1052(e)(2) and (3). See, e.g., In re Wada, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999) (NEW YORK held to have primarily geographic significance; Court was not persuaded by assertions that the composite NEW YORK WAYS GALLERY evokes a gallery that features New York "ways" or "styles"); In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987) (evidence insufficient to establish that public in United States would perceive VITTEL as the name of a place where cosmetic products originate; Vittel, France found to be obscure); In re Cheezwhse.com, Inc., 85 USPQ2d 1917 (TTAB 2008) (NORMANDIE CAMEMBERT, with CAMEMBERT disclaimed, held primarily geographically descriptive of cheese because NORMANDIE is the French spelling for Normandy, consumers would recognize NORMANDIE as the equivalent of Normandy, the primary significance of Normandy is a known geographic place in France, and CAMEMBERT is generic for applicant’s goods; Board was not persuaded that the primary significance of NORMANDIE was the ocean liner SS Normandie); In re Cotter & Co., 228 USPQ 202 (TTAB 1985) (the primary significance of WESTPOINT is as the name of the United States Military Academy rather than the town in New York).

The fact that the proposed mark has meaning or usage other than as a geographic term does not necessarily alter its primarily geographic significance. See TMEP §§1210.02(b)(i)–1210.02(b)(i).

When a geographic term is combined with additional matter (e.g., wording and/or a design element), the examining attorney must determine the primary significance of the composite. See TMEP §§1210.02(c)–1210.02(c)(iii).

See TMEP §1210.04(c) regarding obscure or remote geographic marks.

1210.02(b)(i)   Other Meanings

The fact that the mark has meaning or usage other than as a geographic term does not necessarily alter its primarily geographic significance. Thus, if a geographic term has another meaning, the examining attorney must determine whether the primary significance is geographic. If so, registration must be refused under §2(e)(2), §2(e)(3), or §2(a). See, e.g., In re Hollywood Lawyers Online,110 USPQ2d 1852, 1858 (TTAB 2014) (finding no allusion to the alternative meaning of "Hollywood" referencing the film industry when viewed in the context of applicant’s services and without additional elements in the mark to detract from the geographic significance); In re Opryland USA Inc., 1 USPQ2d 1409 (TTAB 1986) (THE NASHVILLE NETWORK held primarily geographically descriptive of television program production and distribution services, the Board finding that the primary significance of the term was Nashville, Tennessee, and not that of a style of music); In re Cookie Kitchen, Inc., 228 USPQ 873, 874 (TTAB 1986) (the fact that MANHATTAN identifies an alcoholic cocktail does not alter the primary significance of that term as a borough of New York City); In re Jack’s Hi-Grade Foods, Inc., 226 USPQ 1028, 1029 (TTAB 1985) (finding that the fact that NEAPOLITAN identifies, among other things, a type of ice cream, does not alter the primary significance of that term as meaning "of or pertaining to Naples in Italy").

However, if the most prominent meaning or significance of the mark is not geographic, or if the mark creates a separate readily understood meaning that is not geographic, registration must not be refused under §2(e)(2), §2(e)(3), or §2(a). See Hyde Park Clothes, Inc. v. Hyde Park Fashions, Inc., 93 USPQ 250 (S.D.N.Y. 1951), aff’d, 204 F.2d 223, 97 USPQ 246 (2d Cir. 1953), cert. denied, 346 U.S. 827, 99 USPQ 491 (1953) (holding that the primary significance of HYDE PARK for men’s suits is to suggest that the product is stylish or of high quality rather than to provide information about geographic origin); In re Int'l Taste Inc., 53 USPQ2d 1604, 1605–06 (TTAB 2000) (finding doubt as to the primary significance of HOLLYWOOD because of other prominent, significant meaning of HOLLYWOOD as referring to the entertainment industry in general, with the doubt resolved in favor of the applicant); In re Urbano, 51 USPQ2d 1776, 1780 (TTAB 1999) (finding the primary significance of SYDNEY 2000, used for advertising, business, and communication services, is as a reference to the Olympic Games, not to the name of a place); In re Jim Crockett Promotions Inc., 5 USPQ2d 1455, 1456 (TTAB 1987) (finding that the primary significance of THE GREAT AMERICAN BASH for promoting, producing, and presenting professional wrestling matches, is to suggest something of desirable quality or excellence rather than to describe the geographic origin of the services); In re Dixie Ins. Co., 223 USPQ 514, 516 (TTAB 1984) (DIXIE held not primarily geographically descriptive of property and casualty underwriting services, where the examining attorney provided no evidence to show that the geographical significance of DIXIE was its primary significance).

1210.02(b)(i)(A)   Surname Significance

A term’s geographic significance may not be its primary significance if the term also has surname significance. See In re Hamilton Pharm. Ltd., 27 USPQ2d 1939, 1943 (TTAB 1993) (HAMILTON held primarily merely a surname, even though the term had some geographical connotations); In re Colt Indus. Operating Corp., 195 USPQ 75 (TTAB 1977) (FAIRBANKS held not primarily merely a surname because the geographical significance of the mark was determined to be just as dominant as its surname significance).

1210.02(b)(ii)   More Than One Geographic Location With Same Name

The fact that the mark identifies more than one geographic location does not necessarily detract from the term’s primary geographic significance. See, e.g., In re Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985) (DURANGO held primarily geographically deceptively misdescriptive of chewing tobacco not grown in Durango, Mexico, where the evidence of record showed that tobacco is a crop produced and marketed in that area, even though there is more than one place named Durango); In re Cambridge Digital Sys., 1 USPQ2d 1659, 1662 (TTAB 1986) (CAMBRIDGE DIGITAL and design held primarily geographically descriptive of computer systems and parts thereof, where applicant’s place of business is Cambridge, Massachusetts, even though there is more than one Cambridge).

1210.02(b)(iii)   Non-Geographic Characteristics of Goods or Services

Geographic matter may serve to designate a kind or type of goods or services, or to indicate a style or design that is a feature of the goods or services, rather than to indicate their geographic origin. For example, the geographic components in terms such as "dotted swiss," "Boston baked beans," "Swiss cheese," "Early American design," and "Italian spaghetti" are not understood as indicating the geographic origin of the goods but, rather, a particular type or style of product (regardless of where the product is produced). See Forschner Grp. Inc. v. Arrow Trading Co. Inc., 30 F.3d 348, 356, 31 USPQ2d 1614, 1619 (2d Cir. 1994), aff’d, 124 F.3d 402, 43 USPQ2d 1942 (2d Cir. 1997) (finding that SWISS ARMY KNIFE refers to a knife used by the Swiss Army, not an Army Knife from Switzerland); Institut Nat’l des Appellations D’Origine v. Vintners Int’l Co., Inc., 958 F.2d 1574, 1580, 22 USPQ2d 1190, 1195 (Fed. Cir. 1992) (finding evidence showing that Chablis is the name of a region in France insufficient to establish that CHABLIS WITH A TWIST is geographically deceptive of wine under §2(a), where evidence showed that the term "Chablis" would be perceived by consumers in the United States as the generic name for a type of wine with the general characteristics of French chablis); Hyde Park Clothes, Inc. v. Hyde Park Fashions, Inc., 93 USPQ 250 (S.D.N.Y. 1951), aff’d, 204 F.2d 223, 97 USPQ 246 (2d Cir. 1953), cert. denied, 346 U.S. 827, 99 USPQ 491 (1953) (primary significance of HYDE PARK for men’s suits is to suggest that the product is stylish or of high quality rather than to provide information about geographic origin).

When geographic terms are used in circumstances in which it is clear that they are meant to convey some meaning other than geographic origin, registration must not be refused on the basis of geographical descriptiveness or misdescriptiveness. However, there may be some other basis for refusal; for example, the terms may be merely descriptive or deceptively misdescriptive of the goods or services under §2(e)(1) of the Act, 15 U.S.C. §1052(e)(1). In re MBNA Am. Bank, N.A., 340 F.3d 1328, 67 USPQ2d 1778 (Fed. Cir. 2003), reh’g denied, 2004 U.S. App. LEXIS 2187 (Fed. Cir. Jan. 12, 2004) (MONTANA SERIES and PHILADELPHIA SERIES are merely descriptive of "credit card services featuring credit cards depicting scenes or subject matter of, or relating to" the places named in the marks); In re Cox Enters. Inc., 82 USPQ2d 1040 (TTAB 2007) (applicant’s mark, THEATL, is simply a compressed version of the term "THE ATL," which is a nickname for the city of Atlanta, and is merely descriptive of the subject matter of applicant’s publications); In re Busch Entm't Corp., 60 USPQ2d 1130 (TTAB 2000) (EGYPT merely descriptive of subject matter or motif of amusement park services). See TMEP §§1209–1209.04 regarding marks that are merely descriptive or deceptively misdescriptive under §2(e)(1).

In rare circumstances, it may be unclear whether the primary significance of the term is geographic or merely descriptive or deceptively misdescriptive. In such cases, the examining attorney may refuse registration on both grounds, in the alternative.

1210.02(b)(iv)   "America" or "American" and Similar Terms in Marks

When terms such as "AMERICA," "AMERICAN," and "USA" appear in marks, determining whether the term or the entire mark should be considered geographic can be particularly difficult. There is no simple or mechanical answer to the question of how to treat "AMERICA" or "AMERICAN" in a mark. The examining attorney must evaluate each mark on a case-by-case basis. The examining attorney must consider the entire context, the type of goods or services at issue, the geographic origin of the goods or services and, most importantly, the overall commercial impression engendered by the mark at issue. The following principles, developed in the case law, should provide guidance in reaching a judgment in a given case.

  • (1) If "AMERICA" or "AMERICAN" is used in a way that primarily denotes the United States origin of the goods or services, then the term is primarily geographically descriptive. See, e.g., Am. Diabetes Ass’n, Inc. v. Nat'l Diabetes Ass’n, 533 F. Supp. 16, 214 USPQ 231 (E.D. Pa. 1981), aff’d, 681 F.2d 804 (3d Cir. 1982) (AMERICAN DIABETES ASSOCIATION held primarily geographically descriptive); In re Monograms Am., Inc., 51 USPQ2d 1317 (TTAB 1999) (MONOGRAMS AMERICA primarily geographically descriptive of consultation services for owners of monogramming shops); In re BankAmerica Corp., 231 USPQ 873 (TTAB 1986) (BANK OF AMERICA held primarily geographically descriptive); Am. Paper & Plastic Products, Inc. v. Am. Automatic Vending Corp., 152 USPQ 117 (TTAB 1966) (AMERICAN AUTOMATIC VENDING held primarily geographically descriptive).

    One commentator refers to such marks as exhibiting an "unadorned" use of "AMERICA" or "AMERICAN." J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §14:11 (4th ed. 2006). Many service marks (e.g., association-type marks) fall squarely into this category. See, e.g., In re U.S. Cargo, Inc., 49 USPQ2d 1702 (TTAB 1998) (U.S. CARGO primarily geographically descriptive of towable trailers carrying cargo and vehicles).

  • (2) If a composite mark does not primarily convey geographic significance overall, or if "AMERICA" or "AMERICAN" is used in a nebulous or suggestive manner, then it is inappropriate to treat "AMERICA" or "AMERICAN" as primarily geographically descriptive. See, e.g., Hamilton-Brown Shoe Co. v. Wolf Bros. & Co., 240 U.S. 251 (1916) (THE AMERICAN GIRL held not primarily geographically descriptive for shoes); Am. Plan Corp. v. State Loan & Fin. Corp., 365 F.2d 635, 150 USPQ 767 (3d Cir. 1966), cert. denied, 385 U.S. 1011, 152 USPQ 844 (1967) (AMERICAN PLAN CORPORATION held not primarily geographically descriptive for insurance brokerage services); Wilco Co. v. Automatic Radio Mfg. Co., Inc., 255 F. Supp. 625, 151 USPQ 24 (D. Mass. 1966) (ALL AMERICAN held not primarily geographically descriptive); In re Jim Crockett Promotions Inc., 5 USPQ2d 1455 (TTAB 1987) (THE GREAT AMERICAN BASH held not primarily geographically descriptive of wrestling exhibitions).

    The introduction of a nuance, even a subtle one, may remove a mark from the primarily geographically descriptive category. This area calls for the most difficult analysis. The examining attorney must determine whether the overall commercial impression is something other than primarily geographic – for example, due to double meanings or shades of suggestive meanings.

  • (3) If "AMERICA" or "AMERICAN" is used in virtually any manner with goods or services that are not from the United States, then the examining attorney should determine whether the term is primarily geographically deceptively misdescriptive under §2(e)(3) and/or deceptive under §2(a). See, e.g., Singer Mfg. Co. v. Birginal-Bigsby Corp., 319 F.2d 273, 138 USPQ 63 (C.C.P.A. 1963) (AMERICAN BEAUTY held primarily geographically deceptively misdescriptive when used on Japanese-made sewing machines); In re Biesseci S.p.A., 12 USPQ2d 1149 (TTAB 1989) (AMERICAN SYSTEM and design, with a disclaimer of AMERICAN, held deceptive for clothing manufactured in Italy). Cf. In re Salem China Co., 157 USPQ 600 (TTAB 1968) (AMERICAN LIMOGES held deceptive under §2(a) when used on china not made in Limoges, France). In this situation, even marks that arguably convey a non-geographic commercial impression must be viewed with great skepticism.
  • (4) If "AMERICA" or "AMERICAN" appears in a phrase or slogan, the examining attorney must evaluate the entire mark to determine whether it is merely descriptive as laudatory, or even incapable. In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (THE BEST BEER IN AMERICA so highly laudatory and descriptive as applied to beer and ale that it is incapable of acquiring distinctiveness); In re Carvel Corp., 223 USPQ 65 (TTAB 1984) (AMERICA’S FRESHEST ICE CREAM held incapable); In re Wileswood, Inc., 201 USPQ 400 (TTAB 1978) (AMERICA’S BEST POPCORN! and AMERICA’S FAVORITE POPCORN! held merely descriptive of unpopped popcorn); Kotzin v. Levi Strauss & Co., 111 USPQ 161 (Comm’r Pats. 1956) (AMERICA’S FINEST JEANS and AMERICA’S FINEST for overalls held not confusingly similar and incapable by inference).

    Typically these marks primarily extol the quality or popularity of the goods or services and secondarily denote geographic origin. See TMEP §1209.03(n) regarding use of terms such as "AMERICA" and "AMERICAN" in a way that is merely descriptive or generic.

1210.02(c)   Geographic Terms Combined With Additional Matter

A geographic composite mark is one composed of geographic matter coupled with additional matter (e.g., wording and/or a design element). When examining such a mark, the examining attorney must determine the primary significance of the composite. See In re Save Venice New York Inc., 259 F.3d 1346, 59 USPQ2d 1778 (Fed. Cir. 2001) (THE VENICE COLLECTION and SAVE VENICE INC. with an image of the winged Lion of St. Mark, for various goods, held primarily geographically deceptively misdescriptive of products that do not originate in Venice, Italy); In re Wada, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999) (NEW YORK WAYS GALLERY, with a disclaimer of NEW YORK, held primarily geographically deceptively misdescriptive of backpacks, handbags, purses, and similar items); In re Bacardi & Co. Ltd., 48 USPQ2d 1031 (TTAB 1997) (HAVANA SELECT, HABANA CLASICO, OLD HAVANA, HAVANA PRIMO, and HAVANA CLIPPER primarily geographically deceptively misdescriptive of rum); In re Perry Mfg. Co., 12 USPQ2d 1751 (TTAB 1989) (PERRY NEW YORK and design, with a disclaimer of NEW YORK, held deceptive for various items of clothing that originate in North Carolina, and have no connection with New York, because of the renown of New York in the apparel industry); In re Biesseci S.p.A., 12 USPQ2d 1149 (TTAB 1989) (AMERICAN SYSTEM and design of running man, for clothing manufactured in Italy, held deceptive).

See TMEP §§1210.06–1210.06(b) regarding the procedure for examining geographic composites.

1210.02(c)(i)   Two Geographic Terms Combined

When two geographic terms are combined in the same mark, the primary significance of the composite may still be geographic, if purchasers would believe that the goods/services originate from or are rendered in both of the locations named in the mark. See In re Narada Productions, Inc., 57 USPQ2d 1801, 1803 (TTAB 2001) (CUBA L.A. primarily geographically deceptively misdescriptive of musical recordings and live musical performances that do not originate in Cuba or Los Angeles, the Board finding that purchasers would understand the composite as a reference to the two places named rather than to "some mythical place called ‘Cuba L.A.’"); In re London & Edinburgh Ins. Grp. Ltd., 36 USPQ2d 1367 (TTAB 1995) (LONDON & EDINBURGH INSURANCE primarily geographically descriptive of insurance and underwriting services that are rendered or originate in the cities of London and Edinburgh).

Repeating a geographical term does not alter the geographical significance of that term. In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694 (TTAB 1992) (LONDON LONDON held deceptive for clothing having no connection with London, given the renown of London as a center for contemporary as well as traditional fashions).

1210.02(c)(ii)   Geographic Terms Combined With Descriptive or Generic Matter

Generally, the addition of a highly descriptive or generic term to the name of a geographic place does not alter its primarily geographic significance. In re Cheezwhse.com, Inc., 85 USPQ2d 1917 (TTAB 2008) (NORMANDIE CAMEMBERT with CAMEMBERT disclaimed, held primarily geographically descriptive of cheese because Normandy, France was famous for cheese and the Board presumed that the goods would originate there since applicant failed to submit information about the origin of the goods); In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001) (MINNESOTA CIGAR COMPANY primarily geographically descriptive of cigars); In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998) (CAROLINA APPAREL primarily geographically descriptive of retail clothing store services); In re Chalk’s Int’l Airlines Inc., 21 USPQ2d 1637 (TTAB 1991) (PARADISE ISLAND AIRLINES held primarily geographically descriptive of the transportation of passengers and goods by air, because the applicant’s services included flights to and from Paradise Island, Bahamas, even though the flights were not based there); In re Wine Soc’y of Am. Inc., 12 USPQ2d 1139 (TTAB 1989) (THE WINE SOCIETY OF AMERICA held primarily geographically descriptive of wine club membership services); In re Cal. Pizza Kitchen Inc., 10 USPQ2d 1704 (TTAB 1988) (CALIFORNIA PIZZA KITCHEN, with a disclaimer of PIZZA KITCHEN, held primarily geographically descriptive of restaurant services); In re Cambridge Digital Sys., 1 USPQ2d 1659 (TTAB 1986) (CAMBRIDGE DIGITAL and design, with DIGITAL disclaimed, held primarily geographically descriptive of computer systems and parts thereof).

1210.02(c)(iii)   Arbitrary, Fanciful, or Suggestive Composites

If, when viewed as a whole, a composite mark would not be likely to be perceived as identifying the geographic origin of the goods or services (i.e., the mark as a whole is not primarily geographically descriptive, primarily geographically deceptively misdescriptive, or deceptive), then the mark is regarded as arbitrary, fanciful, or suggestive. See In re Sharky’s Drygoods Co., 23 USPQ2d 1061 (TTAB 1992) (PARIS BEACH CLUB, applied to T-shirts and sweatshirts, not deceptive under §2(a), the Board reasoning that because Paris is not located on an ocean or lake, and does not have a beach, the juxtaposition of "Paris" with "Beach Club" results in an incongruous phrase which purchasers would view as a humorous mark, a take off on the fact that Paris is known for haute couture. Thus, purchasers would not expect T-shirts and sweatshirts to originate in the city of Paris).