Place Names and Trademarks
Trademark law, like all intellectual property law, has to be balanced to serve two competing goals. On the one hand, giving companies’ trademarks legal protections helps protect customers by making sure they are buying from the company that they think they are. On the other hand, giving too much power to the protection of trademarks could make it difficult for companies to compete with each other. For instance, if someone were allowed to trademark the word “bread,” then anyone else who made bread would have to start selling it under a different name, like “yeast-based wheat product.” That would clearly put them at a disadvantage.
A similar problem exists with regard to trademarks that have place names in them. If a company starts billing itself as Florida furniture, then an overly aggressive trademark protection system could prevent other Floridian furniture companies from advertising where they are. Fortunately, the law deals with this by providing different levels of protection to terms that other companies might need to use.
Protecting Trademarks with Place Names
There are five ranks of trademark name that get three different levels of protection. The highest level is given to names that are fanciful, arbitrary, or suggestive. Fanciful names are those that are completely made up, like Xbox. Arbitrary names are real words that have no relation to the product, like Apple for computers. Suggestive names are those that merely suggest some quality of the product, like Jaguar for a car. The next level of protection is a descriptive mark. These are marks that outright describe some quality of the product, like Visionworks for a store that sells eyeglasses. The lowest level are generic words, like bread. These are entitled to no protection at all.
Geographic names can be tricky because they might be arbitrary or they might be descriptive. Take the example of the magazine Atlantic. Atlantic is a geographic name, but the Atlantic Ocean has nothing to do with the magazine. That makes it arbitrary. If the magazine were a trade publication about fishing in the Atlantic, then it would be more likely to be considered descriptive.
Descriptive marks do not automatically qualify for protection, but they may be protected if they have acquired “secondary meaning.” Secondary meaning means that consumers have developed some association between the mark and the company’s products, rather than just taking its geographic meaning.
There is also a second way that geographic terms enter into trademark law, “geographical indications,” which should not be confused with trademarks that contain place names. Geographical indications are part of the trademark system that was set up to comply with international intellectual property treaties. Rather than denoting a specific manufacturer, they signify that a product is coming from a certain region that is especially well known for producing something with certain qualities. Examples of these sorts of indications include potatoes from Idaho, sparkling wine from the Champagne region of France, and Florida oranges.
Trademark infringement lawsuits are highly fact-specific, and depend on a variety of factors. If you have recently become involved in a trademark dispute, contact a West Palm Beach Trademark litigation attorney at Pike & Lustig, LLP today.