Today's Tip For Saving Your Trademark Filing Fee - Avoid Geographically Descriptive Marks

There are many reasons why the U.S. Patent and Trademark Office might refuse to register a trademark. Most commonly, applications are refused registration under Section 2(d) of the Trademark Act for a likelihood of confusion with a previously filed mark or under Section 2(e)(1) for being merely descriptive. Probably not as common, but still occurring frequently, are refusals under Section 2(e)(2) for marks that are primarily geographically descriptive.

A good example of a mark that is potentially geographically descriptive is a mark filed on May 19th for LAS VEGAS BREWING COMPANY as it relates to "[b]eer, ale, lager, stout and porter" (Class 032) and "[r]estaurant services including sit-down and take-out services; bar services; serving beer; catering services" (Class 043).

A trademark is considered to be primarily geographically descriptive if:

1. (1) the primary significance of the mark is a generally known geographic location;
2. (2) the goods or services originate in the place identified in the mark; and
3. (3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark. TMEP 1210.01(a).

Is Las Vegas a "generally known geographic location"? I think that's a given.  Would purchasers believe a brewery called Las Vegas Brewing Company is located in Las Vegas? Most likely. Do the goods or services originate from Las Vegas? That's unknown. The applicant's address is listed in San Diego, California but that does not necessarily mean it is not opening a brewery in Las Vegas. If the goods and services listed on this application do originate from Las Vegas, there is a significant risk that the Trademark Office will deem this mark primarily geographically descriptive.

Note - if the goods and services in this application do not originate in Las Vegas, the applicant still might receive an Office Action under Section 2(e)(3) or Section 2(a) of the Trademark Act. Those sections prohibit the registration of marks that are primarily geographically deceptively misdescriptive and marks that are deceptive, respectively. The tests under Section 2(e)(3) and Section 2(a) are similar to the test above, except that the goods or services do not originate in the place identified in the mark and the misrepresentation is a material factor in a significant portion of the relevant consumer's decision to buy the goods or use the services.