Today's Tip - Avoid Geographically Descriptive and Misdescriptive Marks

On July 15th, an individual from Hawaii spent $2,475 in filing fees filing eleven trademark applications for the following marks:

1. Hollwood Yoga Mats
2. Los Angeles Yoga Mats
3. Huntington Beach Yoga Mats
4. Pacific Beach Yoga Mats
5. Big Sur Yoga Mats
6. California Yoga Mats
7. San Diego Yoga Mats
8. Laguna Beach Yoga Mats
9. Orange County Yoga Mats
10. Newport Beach Yoga Mats

The applicant filed all of these applications on an "intent to use" basis.

Unfortunately, Section 2(e)(2) of the Trademark Act prohibits the registration of marks that are primarily geographically descriptive and Section 2(e)(3) prohibits registration of marks that are primarily geographically deceptively misdescriptive. With limited exceptions, only marks that are primarily geographically descriptive may be salvaged on the Supplemental Register (which I call the minor leagues of trademark registrations) unless and until they obtain "acquired distinctiveness."

The test for whether a mark is primarily geographically descriptive is as follows (TMEP 1210.01(a)):

1. the primary significance of the mark is a generally known geographic location;
2. the goods or services originate in the place identified in the mark; and
3. purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark.

A mark is primarily geographically deceptively misdescriptive if (TMEP 1210.01(b)):

1. the primary significance of the mark is a generally known geographic location;
2. the goods or services do not originate in the place identified in the mark;
3. purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark; and
4. the misrepresentation is a material factor in a significant portion of the relevant consumer’s decision to buy the goods or use the services.

I'm from Ohio, have never been to California, and have heard of each one of those locations listed in the applicant's trademark registrations. Thus, these marks probably incorporate generally known geographic locations. Unfortunately, that means whether these yoga mats originate from the places identified in the marks is irrelevant to whether the examining attorney at the Trademark Office will issue a refusal to register these marks. These marks are either primarily geographically descriptive or deceptively misdescriptive and thus ineligible for registration at this time.

The applicant could amend any marks found to be primarily geographically descriptive to the Supplemental Register, but cannot do so until she actually starts using the trademarks in commerce (she only has an "intent to use" now). Any marks founds to be primarily geographically misdescriptive are ineligible for registration on the Principal or Supplement Register and will likely be lost.

In other words, the $2,475 nonrefundable filing fee fronted by the applicant is now in serious jeopardy. This scenario demonstrates the value of working with a trademark attorney who can help you identify and avoid bars to registration like those listed above.