On February 21, 2019, Pennsylvania State University (the "Applicant") filed a trademark application with the United States Patent and Trademark Office ("USPTO"), seeking registration of: 1) the word mark PENNSTATE HEALTH; and 2) the words PENNSTATE HEALTH with a logo of a Nittany lion (the "Marks"). The Trademark Examining Attorney refused registration of the Marks, asserting that PENNSTATE HEALTH is primarily geographically descriptive under applicable trademark rights law. On March 9, 2021, the Trademark Trial and Appeal Board ("TTAB") reversed the Examining Attorney's refusal, ruling that the Examining Attorney had "failed to establish the threshold element of geographic descriptiveness."
How is trademark rights law applied to determine that a mark is primarily geographically descriptive?
Primarily Geographically Descriptive
Businesses often use geographic identifiers in their branding to notify consumers of where the products/services that use those marks originated from or to give the impression that the brands have a material connection with a given location. Using a geographic identifier in branding is a risky proposition given that the USPTO may refuse registration where a mark "identifies a real and significant geographic location and the primary meaning of the mark is the geographic meaning," unless the mark has acquired distinctiveness under Section 2(f) of the Trademark Act. Acquired distinctiveness, or "secondary meaning," is proof that, although a mark is not inherently distinctive, the mark has become so distinctive among consumers that it warrants trademark rights law protection.
To refuse mark registration on a primarily geographically descriptive basis, the USPTO must establish that: 1) the primary significance of the term in the branding is the name of a place generally known to the public; 2) the source of the goods and/or services is the place named in the mark; and 3) the public would associate the goods and/or services with the place named in the mark and believe that the goods and/or services originate in that place. When it is not clear that the primary significance of the mark is that of a geographic location, the Trademark Examining Attorney must provide "substantial evidence to support a conclusion that the mark identifies a place 'known generally to the relevant American public.'" In the matter at hand, the TTAB determined that the Trademark Examining Attorney did not present enough support for the proposition that Penn State is known to the public as the State of Pennsylvania, and not Penn State University.
Use Trademark Rights Law to Protect Your Marks
There is a lot of commercial value in building both a strong brand and registering a mark with the USPTO. Federal registration bestows upon mark owners: 1) the presumption of ownership; 2) exclusive rights to use marks nationwide in connection with goods and/or services that are offered through use of the subject marks; 3) the ability to bring a lawsuit in federal court against infringing parties; 4) the ability to use the ® symbol; and 5) enhanced damages against counterfeiters. Choosing a brand name without evaluating the nuances of trademark rights law in advance can be the difference between securing federal registration (and enjoying the associated statutory protections that go with registration), and suffering registration refusal and being left with limited protections.
Businesses looking to create strong brands should consult with a knowledgeable trademark attorney to obtain all of the benefits associated with federal trademark registration.
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The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
