Trademark Rights Law: Penn State Not Geographically Descriptive

Trademark Rights Law: Penn State Not Geographically Descriptive
Print Friendly, PDF & Email

On February 21, 2019, Pennsylvania State University (the “Applicant”) filed a trademark application with the United States Patent and Trademark Office (“USPTO”), seeking registration of: 1) the word mark PENNSTATE HEALTH; and 2) the words PENNSTATE HEALTH with a logo of a Nittany lion (the “Marks”). The Trademark Examining Attorney refused registration of the Marks, asserting that PENNSTATE HEALTH is primarily geographically descriptive under applicable trademark rights law. On March 9, 2021, the Trademark Trial and Appeal Board (“TTAB”) reversed the Examining Attorney’s refusal, ruling that the Examining Attorney had “failed to establish the threshold element of geographic descriptiveness.” 

How is trademark rights law applied to determine that a mark is primarily geographically descriptive?

Primarily Geographically Descriptive

Businesses often use geographic identifiers in their branding to notify consumers of where the products/services that use those marks originated from or to give the impression that the brands have a material connection with a given location. Using a geographic identifier in branding is a risky proposition given that the USPTO may refuse registration where a mark “identifies a real and significant geographic location and the primary meaning of the mark is the geographic meaning,” unless the mark has acquired distinctiveness under Section 2(f) of the Trademark Act. Acquired distinctiveness, or “secondary meaning,” is proof that, although a mark is not inherently distinctive, the mark has become so distinctive among consumers that it warrants trademark rights law protection. 

To refuse mark registration on a primarily geographically descriptive basis, the USPTO must establish that: 1) the primary significance of the term in the branding is the name of a place generally known to the public; 2) the source of the goods and/or services is the place named in the mark; and 3) the public would associate the goods and/or services with the place named in the mark and believe that the goods and/or services originate in that place. When it is not clear that the primary significance of the mark is that of a geographic location, the Trademark Examining Attorney must provide “substantial evidence to support a conclusion that the mark identifies a place ‘known generally to the relevant American public.’” In the matter at hand, the TTAB determined that the Trademark Examining Attorney did not present enough support for the proposition that Penn State is known to the public as the State of Pennsylvania, and not Penn State University. 

Use Trademark Rights Law to Protect Your Marks

There is a lot of commercial value in building both a strong brand and registering a mark with the USPTO. Federal registration bestows upon mark owners: 1) the presumption of ownership; 2) exclusive rights to use marks nationwide in connection with goods and/or services that are offered through use of the subject marks; 3) the ability to bring a lawsuit in federal court against infringing parties; 4) the ability to use the ® symbol; and 5) enhanced damages against counterfeiters. Choosing a brand name without evaluating the nuances of trademark rights law in advance can be the difference between securing federal registration (and enjoying the associated statutory protections that go with registration), and suffering registration refusal and being left with limited protections. 

Businesses looking to create strong brands should consult with a knowledgeable trademark attorney to obtain all of the benefits associated with federal trademark registration. 

If you are interested in obtaining assistance with registering a trademark, or if you have been sued by a competing brand owner, please email us at, or call us at (212) 246-0900

The material contained herein is provided for informational purposes only and is not legal advice, nor is it a substitute for obtaining legal advice from an attorney. Each situation is unique, and you should not act or rely on any information contained herein without seeking the advice of an experienced attorney. 

Attorney Advertising

Related Blog Posts:

Want to Coexist with Another Brand? Ask a TM Lawyer How to Do So

Wondering if your Trademark has Been Abandoned? Ask a Trademark Lawyer

Common Law Trademark Rights in “Florida Avenue”

David O. Klein

David O. Klein

David Klein is one of the most recognized attorneys in the telemarketing, technology, Internet marketing, sweepstakes and telecommunications fields. Skilled at counseling clients on a broad range of technology-related matters, David Klein has substantial experience in negotiating and drafting complex licensing, marketing and Internet agreements.

Schedule a Call
In The Know

Trending Topics

New York Sweepstakes Law blog- Klein Moynihan Turco

New York Sweepstakes Law: Are You Compliant?

Print Friendly, PDF & Email

In general, a lottery exists when entrants pay for the chance to win a prize. States alone reserve the right to administer lotteries. Businesses can eliminate one element of what would otherwise be an illegal lottery, in order to transform it into a legal promotional game. If the requirement to

TCPA surveys

An Ad or not an Ad: NY Weighs in on TCPA Surveys

Print Friendly, PDF & Email

Another day, another court decision that refines constitutes a Telephone Consumer Protection Act (“TCPA”) unsolicited fax advertisement. A Manhattan-based federal court recently issued a decision that removes faxed invitations to participate in a survey from the TCPA definition of advertisement. In drawing this distinction for TCPA surveys, the Court held

NY sports gambling law- Klein Moynihan Turco

Agreement Reached to Enact NY Sports Gambling Law

Print Friendly, PDF & Email

This week, Governor Andrew Cuomo and the New York State Legislature agreed to a budget deal that will bring mobile sports betting to the State through a unique NY sports gambling law.  Upon the Governor’s signature, NY sports gambling is primed to become the nation’s largest market. However, New York

UK and US Social Media Influencer Laws

UK and US Social Media Influencer Laws

Print Friendly, PDF & Email

In September of 2020, the United Kingdom’s (“UK”) Committee of Advertising Practice (“CAP”) reviewed the Instagram accounts of 122 UK-based social media influencers to determine whether content was being properly flagged as advertising in accordance with applicable social media influencer laws. This past March, the UK Advertising Standards Authority (“ASA”)

Share on facebook
Share on google
Share on twitter
Share on linkedin