Geographically Descriptive Marks
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Delaware & Hudson Canal
Co. v. Clark, 80 U.S.
- A certain type of coal was
named for the valley from which it was mined.
- The plaintiff mining company, the first to sell coal under the valley's name, sought to obtain
exclusive rights in that name for use as a trademark.
- The place name, Lackawanna,
was, in this case, determined to be merely descriptive in a geographic sense and, therefore,
- Thus, it was held by the Court to be not registrable
as a trademark.
- The defendant and any other party had the right to describe the coal which they sold as "Lackawanna coal", so long as the coal did, in fact, originate from there.
- All parties are free to truthfully use non-distinctive terms to describe their goods and services.
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- In order for registration to be refused under Section 1052(e)(2) on the ground that a mark is primarily geographically descriptive of goods or services, it must be established that:
- The mark is the name of a place known generally to the public; and
- The public would make a goods/place or services/place association, i.e.,
would believe that the goods or services originate from this place.
- If it is clear that the geographic significance of a term is its primary significance, and the place referred to is neither obscure nor remote, the public's association of the goods or services with the place will be presumed, if they, in fact, originate from that place.
- Inclusion in a mark of a component which is non-geographically suggestive in relation to the goods or services in question will not necessarily cause the mark's primary significance to not be geographically descriptive.
- In this sense, whether a mark is unitary or composite is simply not controlling. The mark taken as a whole will be judged in relation to the criteria for finding geographic descriptiveness.
- If such a composite mark, however, can be shown to have connotations which are primarily non-geographic, it may be registrable.
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