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 consumer�s 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 User�s Own Surname There are two cases of surname use The first case is the attempt to use one�s own surname without another competing user -- Based upon the general rule, a user of one�s 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 one�s own surname when a competing user exists courts will not categorically bar the use of one�s 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 one�s own name with a disclaimer and the namesake�s 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)