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Can i register a city name as a trademark ?

Morocco, IN |

operate a coffee shop called : caffe de X

Attorney Answers 4

Posted

If you are doing business in the US and will seek advertisements and readers in the US, then you should register your business in the US state where your business is based. Also check your county and city business tax requirements. The annual fees for all three of these are minimal depending on the state, county and city you register in. Get an attorney to advise you on proper business formation - coporation, LLC, etc.

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Posted

No, you cannot "trademark" geographical terms. To do so would give you exclusive right to use the geographical term. However, you can use geographical terms in a business name.

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2 comments

Bruce E. Burdick

Bruce E. Burdick

Posted

That is an incorrect answer. Geographical terms are in the category of descriptive terms that are considered capable of becoming distinctive through attachment of sufficient secondary meaning through advertising and widespread use. Ex. ARIZONA tea.http://tsdr.uspto.gov/#caseNumber=74622105&caseType=SERIAL_NO&searchType=statusSearch See WYOMING for kitchen cabinets http://tsdr.uspto.gov/#caseNumber=76166609&caseType=SERIAL_NO&searchType=statusSearch There are many, many famous registered geographical trademark examples: LONDON FOG, VIRGINIA SLIMS, SEATTLE'S BEST, LA GEAR, etc.

Clayton Harold Walker Jr.

Clayton Harold Walker Jr.

Posted

Thank you Mr. Burdick for the critique on the answer. I agree Mr. Howard's answer is more complete.

Posted

You cannot apply to register solely a city name as a trademark. The applied-for mark would be rejected as geographically descriptive of the origin of applicant’s goods and/or services. See Trademark Act Section 2(e)(2), 15 U.S.C. §1052(e)(2). A mark is primarily geographically descriptive when the following is demonstrated:

(1) The primary significance of the mark is a generally known geographic place or location;

(2) The goods and/or services for which applicant seeks registration originate in the geographic place identified in the mark; and

(3) Purchasers would be likely to make a goods-place or services-place association; that is, purchasers would be likely to believe that the goods and/or services originate in the geographic place identified in the mark.

In some instances, trademark examiners have allowed the incorporation of a city within a multi-word mark if the name of the city is disclaimed. In other instances examiners have required such multi-word marks containing the name of a city to be filed on the Supplemental Register rather than the Principal Register.

If you are still considering filing such a mark, I strongly suggest you consult trademark counsel before moving forward.

Best of luck.

The information that is placed in this response is for informational purposes only and does not create an attorney-client relationship with Thomas P. Howard, Esq., nor is it intended to be relied upon as a replacement for legal advice from an attorney.

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3 comments

Bruce E. Burdick

Bruce E. Burdick

Posted

Hmmm KRAFT will be interested to hear that PHILADELPHIA cannot be registered as a brand name for cream cheese. http://tsdr.uspto.gov/#caseNumber=74111983&caseType=SERIAL_NO&searchType=statusSearch Or HOUSTON hardware http://tsdr.uspto.gov/#caseNumber=77061276&caseType=SERIAL_NO&searchType=statusSearch The error you made is not recognizing that geographical terms are considered "descriptive" rather than "generic". They are capable of becoming distinctive through extensive marketing. LONDON FOG apparel, WYOMING cabinets, ARIZONA tea, which is why they can go on the Supplemental Register, which is specifically for marks "capable of becoming distinctive" and after 5 years can often move to the Principle Register.

Thomas Porter Howard

Thomas Porter Howard

Posted

I stated above that an applied-for mark based on a city name would be rejected as geographically descriptive - not generic. Trademark examiners allow refiling of geographically descriptive marks on the supplemental register. I agree with you that a supplemental mark may, if it has been used in commerce for over five years, refile for use on the Principal Register and attempt to demostrate distinctiveness at that time.

Bruce E. Burdick

Bruce E. Burdick

Posted

Hmmm, switch from Principal to Supplemental is normally done by amendment not by refiling. Going the other way, from Supplemental to Principal is what requires refiling. I see you did indeed say a city name application would be rejected as geographically descriptive not as generic. These are called "refusals" not rejections, but that is just semantics. . The refusal can be overcome, as the refusal is because the Examining Attorney is tasked with seeing that the record is documented with proof of acquired distinctiveness before allowing registration. If the proof accompanies the application, the application might be allowed without refusal. The takeaway is that city names can be registered as trademarks, but not easily on the Principle Register.

Posted

Only a trademark or IP attorney should answer this. The answer is counterintuitive and most attorneys have the wrong view. The actual answer is Yes. You may have to start on what is called the Supplemental Register, a separate register set up for marks "capable of becoming distinctive". After 5 years of continuous exclusive use and substantial marketing and use you may be able to establish the mark has become distinctive of your goods and services.

Geographical terms are in the category of descriptive terms that are considered capable of becoming distinctive through attachment of sufficient secondary meaning through advertising and widespread use. Ex. PHILADELPHIA for cream cheese by Kraft. http://tess2.uspto.gov/bin/gate.exe?f=doc&state=4010:y005gv.3.5, ARIZONA for tea.http://tsdr.uspto.gov/#caseNumber=74622105&caseType=SERIAL_NO&searchType=statusSearch, HOUSTON for printing fontshttp://tsdr.uspto.gov/#caseNumber=77370066&caseType=SERIAL_NO&searchType=statusSearch.; ATLANTA magazine http://tsdr.uspto.gov/#caseNumber=85530708&caseType=SERIAL_NO&searchType=statusSearch

See WYOMING for kitchen cabinets http://tsdr.uspto.gov/#caseNumber=76166609&caseType=SERIAL_NO&searchType=statusSearch

There are many, many famous registered geographical trademark examples: LONDON FOG, VIRGINIA SLIMS, SEATTLE'S BEST, LA GEAR, etc.

I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.

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