Geographic Trademarks and the Protection of Competitor Communication

Abstract

Over the last 25 years, brand names that incorporate geographic terms have become easier to register immediately at the U.S. Patent and Trademark Office, without having to demonstrate acquired distinctiveness or "secondary meaning." This is largely due to two developments. The first is the rise of a subjective "goods-place association" test, under which an examiner must show that consumers would understand the brand name as claiming geographic origin before refusing registration. The second is the Federal Circuit's interpretation of the NAFTA Implementation Act as requiring a showing of materiality before refusing to register a trademark as primarily geographically deceptively misdescriptive.

This article challenges the assumptions that underlie these developments. It contends that the central aim of the doctrine of geographic descriptiveness is to protect the ability of competitors to communicate information about geographic origin of goods and services. In light of that aim, the doctrine should look, not at current subjective consumer understanding of a geographic brand name, but at what competitors could use that name to communicate, and how trademark protection would burden that communication. The article also considers the treaty obligations of the United States with regard to protection of geographic trademarks, and proposes an approach that would both satisfy U.S. treaty obligations and implement sound trademark policy.

Keywords: Lanham Act, Trademarks, Geographical Indications, Geographic Trademarks, NAFTA Implementation Act, TRIPS, In re Nantucket, In re California Innovations

JEL Classification: K19, K20