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Question & Answer: Trademark Heirarchy

A student recently asked about trademark heirarchy and geographic indicators, particularly in light of the fact that the relevant portions of the Lanham Act, 15 USC 1052, is quite difficult to parse. So here's a (hopefully) concise explanation:

First, as a review, I note again the basic heirarchy of trademarks:


  • Generic: unprotectable

  • Descriptive: unprotectable, unless secondary meaning is shown

  • Suggestive: protectable (inherently distinctive)

  • Arbitrary or Fanciful: protectable (inherently distinctive)

Geographic Terms
For geographic terms, note that we studied the registrability of such terms under the Lanham Act, not expressly whether they are protectable as marks. For purposes of your exam, you can assume that registrability = protectability, but you should understand that the common-law and various state laws might have slightly different outcomes.

Here are the three categories of geographic terms, and their registrability (note that the trick here is that you have to read 1052(e) and (f) together):


  • primarily geographically descriptive: not registrable, unless secondary meaning is shown [ see 1052(e)(2) + 1052(f) ]

  • primarily geographically misdescriptive: registrable, no need to show secondary meaning

  • primarily geographically deceptively misdescriptive: not registrable [1052(e)(3) + 1052(f)

Note that under 1052(f), there is an exception allowing registration for primarily geographically deceptively misdescriptive marks that gained secondary meaning prior to December 8, 1993.

Posted by pwagner at April 25, 2007 9:06 AM in Questions