What is a “Primarily Geographically Descriptive” refusal?

A “Primarily Geographically Descriptive” refusal is a reason for rejection given by the United States Patent and Trademark Office (USPTO) when an applicant attempts to register a trademark that primarily describes the geographic origin of the goods or services. This means that the trademark sought to be registered does not function as a source indicator because the primary significance of the trademark to the relevant public is a geographical location rather than the source of the goods or services.

For example, if an applicant sought to register the trademark “Seattle Coffee” for coffee products, the USPTO might issue a “Primarily Geographically Descriptive” refusal because the primary significance of the trademark is the geographical location “Seattle” rather than the source of the coffee products.

The response options for a “Primarily Geographically Descriptive” refusal depend on the facts and circumstances of each individual case. An applicant may modify their trademark to make it less descriptive of a geographic location, or they may provide evidence that their trademark has acquired distinctiveness and thus functions as a source indicator. In some cases, an applicant may seek to overcome the refusal by submitting additional evidence or arguments to demonstrate that the trademark has a secondary meaning that identifies the source of the goods or services.

To overcome this refusal, you have several options:

  1. Provide evidence that the geographical term has acquired secondary meaning. This means that the public associates the term with the specific goods or services being offered, rather than with the geographical location.
  2. Modify the trademark by adding other words or symbols that change the overall impression of the mark and make it more distinctive.
  3. Disclaim the geographical term from the trademark. This means that you are acknowledging that the geographical term is not part of the trademark, and is merely descriptive of the goods or services being offered.
  4. Wait until the trademark has been in use for a sufficient amount of time, and then apply for registration again.

It’s important to carefully consider the options available to you and choose the one that best meets your needs. An experienced trademark attorney can help you navigate the options and ensure that your response is complete and compelling.