Monday, February 11, 2019

Czech Small Arms Company Files Application to Register CZECH SMALL ARMS as a Trademark For Firearms

On February 6, Czech Small Arms, s.r.o., a company organized in the Czech Republic, filed an application to register CZECH SMALL ARMS as a trademark for "Firearms" in Class 13 with the U.S. Patent and Trademark Office. According to the application, Czech Small Arms has used CZECH SMALL ARMS as a trademark for firearms since January 2010. The specimen submitted with the application, which is submitted to prove use of the trademark in commerce, is below.
But is the trademark primarily geographically descriptive, meaning the USPTO must refuse to register it under Section 2(e)(2) of the Trademark Act unless it has acquired distinctiveness?

To establish, at least initially, that a mark is primarily geographically descriptive, the examining attorney at the USPTO must show:
  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.
TMEP 1210.01(a).

Is the Czech Republic a generally known geographic location? Do the firearms originate there? Are consumers likely to believe the firearms originate from the Czech Republic? If the answer to these questions is yes, Czech Small Arms will have a difficult time registering this trademark (on the Principal Register, which affords the most legal benefits, at least).

An applicant can get a primarily geographically descriptive trademark registered on the Principal Register only if it can show the mark has acquired distinctiveness under Section 2(f) of the Trademark Act. Generally, a mark acquires distinctiveness when the consuming public recognizes that the goods sold under the mark are produced by a particular manufacturer, as opposed to simply perceiving the trademark as a geographically descriptive designation. 

Sometimes a mark is presumed to have acquired distinctiveness if the applicant can show substantially exclusive and continuous use of the mark for at least five years. TMEP 1212.05. Otherwise, the applicant must submit substantial evidence to prove the mark has acquired distinctiveness. TMEP 1212.06.

If an applicant cannot prove acquired distinctiveness, it can settle for a registration on the Supplemental Register. TMEP 1210.07(a). In some cases, however, a term may be so geographically descriptive that it is deemed incapable of identifying the source of the products, and thus does not function as a trademark and cannot be registered at all. Id; see also Bee Pollen from Eng. Ltd., 219 USPQ 163 (TTAB 1983) (finding BEE POLLEN FROM ENGLAND incapable of distinguishing bee pollen from England).

What do you think? Is CZECH SMALL ARMS primarily geographically descriptive of the underlying goods? If so, do you think the CZECH SMALL ARMS mark is well-known enough so that it might be registered on the Principal Register with a Section 2(f) claim? Or is the mark too geographically descriptive to even be registered on the Supplemental Register? 

We'll see what the examining attorney at the USPTO thinks in approximately three to four months when this application is reviewed.

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