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The Zest

Can You Trademark "St. Pete" Anything? Place Names in Brand Names

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"Can I trademark ST. PETE SOAP CO. if my soap is made in St. Pete?" Not as it stands, at least not on the USPTO's main register. A name whose main message is where you're located is "primarily geographically descriptive," and the USPTO won't register it without proof that customers already see it as your brand. But you have options. You can often register the full name with the place name disclaimed, if the rest of it is distinctive. And a place name used in a way that has nothing to do with where you are can make a strong mark.

Here's how it works, with some made-up local brands to keep it concrete.

Why the place name is the problem

The Lanham Act bars registration on the Principal Register of a mark that is primarily geographically descriptive of the goods or services. The USPTO uses a three-part test. The main significance of the mark has to be a generally known place. The goods or services have to come from that place. And buyers would have to be likely to believe they come from there.

When your products or services really do come from the place in your name, and the place isn't obscure, that last part is generally presumed. So say you make soap in your Kenwood garage and call it ST. PETE SOAP CO. St. Pete is a known place, the soap comes from St. Pete, and buyers would assume it does. Adding a generic word like "soap" or "company" doesn't help. The examination manual's examples include PRINCETON EQUITY GROUP for financial services in Princeton and CHARLESTON HARBOR TOURS.

Think of it this way: every business in town needs to be able to say where it is.

You might hope "St. Pete" slips through because it's a nickname. Don't count on it. The manual treats nicknames and abbreviations like the real place name when the public is likely to read them that way, and it gives "Big Apple" and "Motown" as examples. Nicknames have escaped this refusal when they were too obscure, as O-TOWN was found to be for Orlando. A nickname as common as St. Pete probably isn't one of those.

The same goes for "Tampa Bay," and a city name can cover places within its metro area. A Gulfport or Pinellas Park business using ST. PETE in its name can expect the same analysis.

The other refusal: naming yourself after somewhere you're not

There's a second geographic refusal, and it's harsher. A mark is primarily geographically deceptively misdescriptive when it names a known place, the goods or services don't come from there, buyers would believe they do, and that belief would be a material factor in their decision to buy.

Picture a Tampa Bay roaster that calls its house beans KONA when none of the coffee comes from Kona, Hawaii. Coffee buyers connect Kona with coffee, and where the beans come from matters to them. That's the kind of name this rule is built for.

This one can't be fixed the easy way. A disclaimer doesn't overcome it. It can't go on the Supplemental Register or be registered with proof of acquired distinctiveness, unless the mark was in use or had become distinctive before December 8, 1993. And a mark that's outright deceptive can't be registered at all.

Fix one: disclaim the place name

If the place name is a separable part of your mark and the rest is inherently distinctive, you can register the whole mark with a disclaimer of the place name. Say your soap line is called LOUD PELICAN ST. PETE. LOUD PELICAN does the work of identifying you, so the application can go forward with ST. PETE disclaimed.

A disclaimer just means you're not claiming exclusive rights in the place name by itself. Everyone else in town can keep saying St. Pete. The disclaimer doesn't take away whatever rights you build in the place name, and it doesn't stop you from registering it later if it becomes distinctive of your brand. The one thing you can't do is disclaim everything. The manual is clear that a mark can't be registered if all of its components have been disclaimed, which is why ST. PETE SOAP CO. needs something more.

Fix two: earn it over time

A geographically descriptive mark isn't dead forever. It can go on the Supplemental Register in the meantime, and it can move to the Principal Register once you can show acquired distinctiveness, meaning customers have come to see the name as yours. The statute lets the USPTO accept five years of substantially exclusive and continuous use as a mark as evidence of that. "Substantially exclusive" is the hard part when other local businesses are using the same place name.

Place names aren't the only words treated this way. Surnames get a similar refusal, and the logic is the same: words other people have a right to use start out on the weak end of the scale that sorts strong and weak names.

Fix three: use the place arbitrarily

A place name with no real connection to what you sell is treated as arbitrary, and arbitrary marks are strong. The manual's examples include ALASKA for bananas, COLORADO RIVER for candy bars and MOUNT RUSHMORE for cars. Nobody thinks the bananas came from Alaska.

Whimsy works too. PARIS BEACH CLUB for T-shirts was treated as incongruous, because Paris doesn't have a beach. A hypothetical ST. PETE SNOWSHOE CLUB tee line plays the same game, since snow is not a St. Pete problem, though an examiner would look at the mark as a whole before agreeing.

Before you print the sign

If your favorite name leads with St. Pete or Tampa Bay, assume the place name is the weak part and make sure the rest of the name is doing the real work. Because the place name is free for everyone to use, a clearance search matters even more here: what separates you from the next St. Pete business is everything else in your name. And if your business is strictly local, it's worth knowing that Florida and federal registration work differently.

If you're naming a St. Pete or Tampa Bay business and want to see what's ownable, you can see how the search and filing packages work on the services page, and the FAQs page answers most of what comes up before a first call.

Book a free 15-minute discovery call with the attorney (opens in a new tab)

(No legal advice is given on the discovery call. It's a chance to tell me what you're building and hear how the process works.)

Sources

This article is general information, not legal advice. Reading it does not create an attorney-client relationship.

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