If we assume hypothetically that my company is going to offer Caribbean food, would "Caribbean life" be considered a geographical indication when I apply for the trademark?
Geographic-related terms can be registered in many cases. The mark will be classified as descriptive, however, if the geographic area is known for the product. Think, for example, about Idaho potatoes, Florida oranges or Washington State apples.
A mark cannot be deceptively misdescriptive. For example, since consumers know Florida is known for oranges, a business growing oranges in Michigan cannot protect the mark “Florida oranges.” Consumers would be misled into thinking that the oranges originated in Florida. Similarly, a U.S. company cannot protect a primarily geographic mark in “Columbian coffee.” Consumers would mistakenly make the association to Columbia as the source of the coffee product.
However, a mark may not be “primarily geographically descriptive” if there are several different locations for the product, the name is also a surname or the name doesn’t import information about product origin. It may be the case that marks with terms such as Hollywood, New York, Miami Beach, Paris and other famous places are used in marketing but have no relation to the product’s origin. Popular examples include “Hollywood Burgers” (one would not assume that the burgers are made in Hollywood) and “Jilbere de Paris” clothing line.
Generally, the USPTO uses a two-part test to determine whether a mark is geographically descriptive. First the term must be the name of a place known generally to the public. Second, the public must be likely to make a goods-place or services-place association, i.e., believe that the goods or services originate from that location.
The public would probably not think your food was originating from the Caribbean; however, "Caribbean" is certainly generic for Caribbean food, and you would be forced to disclaim any right to use the term "Caribbean" in your mark, leaving you with "Life".
Caribbean Life could be an ok trademark, if:
1) It's not used by anyone else in your area/region; and
2) It's not too close or easily confused with an existing trademark from someone else
If I were you I would either discuss this choice with a local Intellectual Property or business law attorney who can perform a trademark search. It's important here to do the proper research on other local trademarks that have the word "Carribbean" so you don't apply, and get rejected - this would be a waste.
Feel free to email me if you have questions.
This is a confusing issue so it helps to keep the terminology straight. There are two different situations that will result in a trademark registration application being rejected because the mark contains a geographic term.
First, when the primary significance of the mark is a generally known geographic location and the goods or services to be branded with the mark are associated with that geographic area. The rejection will be made under Section 2(e)(2) as “primarily geographically descriptive.” MAINE in a mark to brand lobster or ATLANTIC CITY in a mark to brand salt water taffy are two obvious examples. See In re Societe Generale des Eaux Minerales de Vittel SA, 824 F. 2d 957 (Fed.Cir.1987) [visit the link below].
Second, when the primary significance of the mark is a generally known geographic location, the goods or services to be branded with the mark are associated with that geographic area, the goods or services do not originate from that place, and the misrepresentation was a material factor in the consumer’s decision to buy the good or service. The rejection will be made under Section 2(e)(3) as “primarily geographically deceptively misdescriptive.” An example is PARIS in a mark to brand fashion accessories when the goods to be branded do not originate from Paris [see In re Miracle Tuesday, LLC, 695 F. 3d 1339 (Fed.Cir.2012)
Other than those two situations it is quite alright to include a geographic place name within a mark. For example, there is no association of which I’m aware between BOSTON and sewing machines so it’s quite alright to include BOSTON in a mark that brands sewing machines. There are innumerable, other examples.
To the question at hand: Is the mark “Caribbean Life” used to brand “Caribbean food” either primarily geographically descriptive or primarily geographically deceptively misdescriptive? If either then it’s not registrable. Only your own trademark attorney can help you answer that question. As to prong one, I think the primary significance of the mark IS the Caribbean geographic area. Other than rum, however, I don’t know of any food item that’s generally associated with “the Caribbean.” Remember, the goods listed in the registration application cannot simply be “Caribbean food” – you need to identify the specific food. If you identify “meat,” for example, then I see no registration problem. Speak with your own trademark attorney.
This is certainly a geographically descriptive trademark, and it would be considered a weak trademark. Your ability to register and enforce such a trademark in connection with Caribbean food would be highly problematic, particularly if you are launching a new company or new product line that has not yet been associated in the minds of consumers with the phrase "Caribbean life". Before thinking about using a trademark like this, you need legal counsel to conduct a trademark clearance analysis---my guess is that there is a substantial risk that you might be infringing trademarks owned by others and/or using a proposed trademark that borders on being generic and is at least only descriptive. Also, you need to be concerned that your trademark is not misdescriptive---if some of the food is not truly Caribbean, you could run into problem and get accused of consumer deception. I have never been a big fan of trademarks that include a geographic element, especially for new companies of product lines,. Such trademarks are often more trouble than they are worth.
One further point--there is no such thing as international trademark protection. Each nation (or groups of nations such as the European Union) have their own trademark registration and acquisition requirements---even if you succeed in using this trademark in the U.S., you may find that you are precluded from using it in Europe, Asia, Mexico, Canada, Latin America, or in the Caribbean. It is no longer enough for any company to consider merely its position in the U.S. Rather, in this age of global commerce you need to realistically analyze where your company is likely to operate, and then consider your proposed trademark with reference to each such country.
As you may have figured out, branding decisions are complex, and you cannot possibly do this successfully on your own without retaining experienced IP counsel.
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