So for instance, could I develop an energy bar and market it as the “Houston Bar”?
Or even just have a bar with “Houston” on the packaging that was self evidently a bar.
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2It might be instructive to search in the U.S. Trademark Office database. – Brandin Oct 29 '19 at 15:55
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1Trademark protection isn't exclusive of all uses of a mark. There are many brand names used by unrelated companies to sell unrelated products. For example, in the US, there are Dove chocolate and Dove soap. Trademark protects someone selling a certain product or service under the give name, so, for example, you can't pretend to deliver water to Houston residents under the name "Houston Public Works." But that's probably true even if Houston never registered a trademark for that name, so they haven't done so. – phoog Oct 29 '19 at 16:08
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The names of municipalities and other geographic designations in the United States are not trademarked by default. However, if you are thinking of starting a company or branding a product using a geographic designation, you'll nonetheless want to be careful because the one you may wish to use may indeed be trademarked. For example, names like Idaho Potatoes, Napa Valley Wines, and Vidalia Onions are protected under U.S. trademark law. Non-U.S. examples protected under U.S. trademark law include Darjeeling and Cognac.
The way a geographic designation is used in a name also affects whether it is protected or not. On one hand, you have descriptive or misdescriptive geographic terms: the former describes the origin, source, or location of the company or its product or service (e.g., New York Life, Bank of Omaha, etc.); the latter are terms that mislead consumers into thinking a product comes from a region when it does not. These are considered "weak," and thus are not protected.
On the other hand, there are "arbitrary or suggestive" geographic terms which are used, as the name suggests, arbitrarily or to give a particular feeling or sentiment to a product. Examples of these would be the magazine called the Atlantic (arbitrary) or the iced tea brand, Arizona (suggestive, meant to make the consumer experience a 'feeling'). These are considered "strong" and are protected by trademark law as such.
For more information, you may wish to look into the Lanham Act, aka the Trademark Act of 1946, 15 U.S.C. §1051 et seq.
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True in substance, but many geographic designations are protected by separate legislation outside the Lanham Act, e.g., the requirement that liquor designated "Bourbon" in the U.S. must have majority State of Kentucky sourcing, which is codified in the federal statutes related to alcohol labeling rather than the Lanham Act. The U.S. frequently does not make foreign protected geographic designations (e.g. champagne) actionable in the U.S. courts. – ohwilleke Dec 30 '19 at 18:58
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"Examples of these would be the magazine called the Atlantic (arbitrary) or the iced tea brand, Arizona (suggestive, meant to make the consumer experience a 'feeling')." IIRC the test is whether the geographic designator has acquired a "secondary meaning" with respect to a product, rather than whether it is "arbitrary v. suggestive" but I am going from memory. – ohwilleke Dec 30 '19 at 19:01
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1Good pt re: Bourbon example. Re: champagne, I believe you’re right, although I also believe that and similar products are nonetheless protected under WTO rules. This could warrant an addendum to my answer, but I’m away for the holiday atm - will make a point to explore this a bit more when I return. I’m pretty confident in the arbitrary vs. suggestive portion, but I have read about “secondary meaning” in the past, now that you mention it. Will look this up, too. I suspect the secondary meaning test could be in addition to or otherwise supplement the other. If I can resolve this, will update. – A.fm. Dec 30 '19 at 19:13
No
However, there are laws against misrepresentation. If you use the expression ‘Houston Bar’ for something not made or associated with Houston you may be violating these.
In addition, the World International Property Organisation recognise geographic identifications which have the door effect of law in many jurisdictions. These area subset of US trademark law.
