Can a geographical or location term be a trademark?
If the geographic term is not a separable element or if none of the additional matter that makes up the composite mark is inherently distinctive (e.g., it is merely descriptive or incapable), then the examining attorney must refuse registration of the entire mark on the Principal Register pursuant to §2(e)(2).
If the geographic term is a separable element and the additional matter making up the mark is inherently distinctive as applied to the goods or services (i.e., coined, arbitrary, fanciful, or suggestive), the applicant may either: (1) register the mark on the Principal Register with a disclaimer of the geographic term; or (2) establish that the geographic term has acquired distinctiveness under §2(f).
If a composite mark comprises a geographic term that is primarily geographically descriptive of the goods or services under §2(e)(2), and the mark as a whole would be likely to be perceived as indicating the geographic origin of the goods or services, then the examining attorney must consider: (1) whether the geographic term is a separable element in the mark; and (2) the nature of the additional matter that makes up the composite mark.
A geographic composite mark is one composed of geographic matter coupled with additional matter (e.g., wording and/or a design element). When examining such a mark, the examining attorney must first determine the primary significance of the composite.
For example, the mark PARIS BEACH CLUB, for clothing, was held not to be perceived as primarily geographic. In re Sharky’s Drygoods Co., 23 USPQ2d 1061 (TTAB 1992). Because Paris is known for haute couture, is not located on an ocean or lake and does not have a beach, the Board found that the juxtaposition of PARIS with BEACH CLUB resulted in an incongruous phrase and that the word PARIS would be viewed as a facetious rather than a geographic reference. Id. at 1062. The mark NEW YORK WAYS GALLERY, however, was found to be geographically deceptive. In re Wada, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999). The Board determined that (1) NEW YORK was not an obscure geographical term; (2) NEW YORK was known as a place where the goods at issue were designed, manufactured, and sold; and (3) the primary geographic significance was not lost by the addition of WAYS GALLERY to NEW YORK. Likewise, in the case of the mark YBOR GOLD, the Board held that the mere addition of the word GOLD to the geographic designation YBOR did not result in an arbitrary, fanciful, or suggestive composite. In re S. Park Cigar, Inc., 82 USPQ2d 1507 (TTAB 2007). The Board determined that GOLD connoted the high quality of the goods and thus did not detract from the geographic significance of YBOR or negate the primarily geographic significance of the mark as a whole. Id. at 1513.
SANIBEL SEA SALT
Registration is refused because the applied-for mark is primarily geographically descriptive of the origin of applicant’s goods. Trademark Act Section 2(e)(2), 15 U.S.C. §1052(e)(2); see TMEP §§1210, 1210.01(a).
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.
When there is no genuine issue that the geographical significance of a term is its primary significance, and the geographical place is neither obscure nor remote, a public association of the goods and/or services with the place is presumed if an applicant’s goods and/or services originate in the place named in the mark. TMEP §1210.04; see, e.g., In re Cal. Pizza Kitchen Inc., 10 USPQ2d 1704, 1706 (TTAB 1988) (holding CALIFORNIA PIZZA KITCHEN primarily geographically descriptive of restaurant services rendered in California); In re Handler Fenton Ws., Inc., 214 USPQ 848, 849-50 (TTAB 1982) (holding DENVER WESTERNS primarily geographically descriptive of western-style shirts originating in Denver).
Applicant has applied to register the mark SANIBEL SEA SALT for use in connection with “organic salt from the estuary waters around Sanibel Island, Florida.” According to the attached printout from the Britannica Online Encyclopedia, Sanibel Island is a barrier island southwest of Fort Myer’s Florida that is a popular tourist destination. Sanibel is also the name of the city on the island. The examining attorney has attached a printout from the Official City of Sanibel Website further showing the geographic significance of the term. Thus, the primary significance of the term SANIBEL is a generally known geographic place or location. The first factor is therefore satisfied.
With regard to the second factor, applicant’s goods are identified as “organic salt from the estuary waters around Sanibel Island, Florida.” Applicant’s goods therefore originate from the geographic place identified in the mark. As a result, the second factor is satisfied.
With regard to the final factor, because there is no genuine issue that the geographical significance of a term is its primary significance, and the geographical place is neither obscure nor remote, and because applicant’s goods originate in the place named in the mark, a public association of the goods with the place is presumed. Applicant’s mark is therefore primarily geographically descriptive of the origin of applicant’s goods.
Applicant adds the term “SEA SALT” to the geographic term. The addition of generic or highly descriptive wording to a geographic word or term does not diminish that geographic word or term’s primary geographic significance. TMEP §1210.02(c)(ii); see, e.g., In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001) (holding MINNESOTA CIGAR COMPANY primarily geographically descriptive of cigars); In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998) (holding CAROLINA APPAREL primarily geographically descriptive of retail clothing store services); In re Chalk’s Int’l Airlines Inc., 21 USPQ2d 1637 (TTAB 1991) (holding PARADISE ISLAND AIRLINES primarily geographically descriptive of the transportation of passengers and goods by air).
According to the attached definition from the Oxford English Dictionary, “sea-salt” is “common salt obtained by the evaporation of sea-water.” Because this term is a generic descriptor of applicant’s goods it does not diminish the primary geographic significance of SANIBEL.
The mark SANIBEL SEA SALT is primarily geographically descriptive of applicant’s goods. As a result, registration is refused pursuant to Section 2(e)(2) of the Trademark Act.
A disclaimer is appropriate where the geographic component is a separable feature of the mark, and the composite mark includes an inherently distinctive, non-disclaimed component (e.g., coined, arbitrary, fanciful, or suggestive wording or design). The composite mark must include a non-disclaimed component because a mark cannot be registered if all the components have been disclaimed. See TMEP §§1213-1213.11 regarding disclaimer.