Trademark Protection: Geographic and Personal Names

1
Trademark Protection Geographic and Personal
Names

• Surname secondary meaning (Good)
• Geographically mis/descriptive secondary
  meaning (Good)
• Primarily geographically deceptively
  misdescriptive (Bad)

2
Source of Law for Surnames

• Registrable Trademarks, 15 U.S.C.A. ? 1052
  (e)(4) states
• No trademarks by which goods of the applicant may
  be distinguished from the goods of others shall
  be refused registration . . . on account of its
  nature unless it --
• Consists of a mark which is primarily merely a
  surname

3
Trademark Protection and Surnames

• Generally, federal registration is not available
  to marks that are primarily merely surnames
• Primarily refers to the primary significance
  test, which measures in the relevant market a
  consumers association of the surname as just
  that, a surname
• However, through the construction of secondary
  meaning, the purchasing public may associate the
  surname with the product, thereby allowing for
  trademark registration and protection. The
  critical factors to consider are
• the impact on the relevant market
• the direct reference to the product

4
Registration Prohibition of a Users Own Surname

• There are two cases of surname use
• The first case is the attempt to use ones own
  surname without another competing user -- Based
  upon the general rule, a user of ones own
  surname will not be able to register the
  trademark, unless the surname has achieved
  secondary meaning
• The second case is the attempt to use ones own
  surname when a competing user exists
• courts will not categorically bar the use of
  ones own surname, but courts will allow the user
  to identify herself with the product so long as
  the surname is not used as a trademark. See 15
  U.S.C.A. ? 1115(b)(4)(Defenses)
• With secondary meaning established by a prior
  user, courts will balance the natural right to
  use ones own name with a disclaimer and the
  namesakes good faith in using the name as a
  trademark

5
Source of Law for Geographic Names

• Registrable Trademarks, 15 U.S.C. ? 1052
  (e)(2)-(3) states
• No trademarks by which goods of the applicant may
  be distinguished from the goods of others shall
  be refused registration . . . on account of its
  nature unless it --
• Consists of a mark which (2) when used on or in
  connection with the goods of the applicant is
  primarily geographically descriptive of them, . .
  . or
• Consists of a mark which (3) when used on or in
  connection with the goods of an applicant is
  primarily geographically deceptively
  misdescriptive of them. . . .

6
Trademark Protection and Geographic Names

• Generally, primarily geographically descriptive,
  primarily geographically misdescriptive names,
  and primarily deceptive misdescrptive cannot be
  registered or protected, unless the term is
  distinctive. If descriptive or misdescriptive,
  the term cannot be registered unless it achieves
  secondary meaning
• The purpose of this prohibition is two-fold
• the bar is meant to prohibit the preemption by
  one party of a term that should be in the public
  domain (protects competitors)
• the bar ensures that a user does not employ a
  primarily misdescriptive geographical mark that
  will create mistake, confusion, or deception
  (protects the public)

7
Registrable Geographic Names

• Geographic names are eligible for registration if
  their secondary meaning outweighs their primarily
  geographical significance
• Secondary Meaning
• consumers associate the geographical mark with a
  single source for particular products (acquired
  secondary meaning)
• Primarily geographical significance
• the relevant market (whether the public would
  believe that the goods originate in the place --
  goods/place association)
• actual origination in the place - geographically
  descriptive
• If the goods do not originate in the place, but
  the public would believe in the goods/place
  association - geographically misdescriptive
• Regardless of the descriptive or misdescriptive
  characterization, each refers to a geographic
  term that will not be registered if a
  recongnizable portion of the consuming market
  conjures up in her mind a place, as opposed to
• the goods of the applicant

8
Deception and Geographical Names

• One major thrust of the Lanham Act is to prevent
  the deception of the public by breeding mistake
  or confusion
• Sections 1052(a) and (e)(3) expressly bar
  registration of marks that consist of deceptive
  matter or consists of marks which when used in
  connection with the goods of the applicant is
  primarily geographically deceptively
  misdescriptive of them
• The Lanham Act does not tolerate deception, thus
  secondary meaning will not save these types of
  marks. See 15 U.S.C.A. ? 1052 (f)