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.

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.