A trademark may be refused registration as primarily geographically descriptive under Section 2(e)(2) of the Trademark Act, 15 U.S.C. § 1052(e)(2), based on the following:

1. the primary significance of the term in the mark sought to be registered is the name of a place that is generally known to the public;
2. the goods originate in the place identified in the mark; and
3. the public would make an association between the goods and the place named in the mark by believing that the goods originate in that place.

See In re Newbridge Cutlery Co., 776 F.3d 854, 113 USPQ2d 1445, 1448 (Fed. Cir. 2015); In re Societe Generale Des Eaux Minerales de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450, 1451-52 (Fed. Cir. 1987); In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1853 (TTAB 2014).

Going Back to CALI

The TTAB affirmed a Section 2(e)(2) refusal of the mark CALIHEMP (in standard characters) for “skin and body topical lotions, creams, oils, balms and salves for cosmetic use, all of the foregoing containing hemp oil extract containing hemp ingredients solely derived from hemp with a delta-9 tetrahyrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis.” In re Smith & Vandiver, Corp., Ser. No. 88477576 (TTAB Dec. 20, 2022).

Geographic Nickname

The evidence of record showed that CALI is a nickname for California, that the term CALI is used by persons in the hemp industry as such, and that hemp-based goods commonly originate from there. Also of record were several third-party registrations for marks incorporating the term CALI for use with similar goods, which included disclaimers of “CALI” or were on the Supplemental Register.

It is well-settled that a geographic nickname, such as “Big Apple” or “Motown”, is treated the same as the actual name of the geographic location, if it is likely to be perceived as such by the purchasing public. See In re Spirits of New Merced, LLC, 85 USPQ2d 1614 (TTAB 2007) (finding “Yosemite” – a well-recognized and frequently used shorthand reference to Yosemite National Park and the Yosemite region in general – conveys a readily recognizable geographic significance); Carolina Apparel, 48 USPQ2d at 1543. We find that the above evidence shows that the term CALI is a well-known nickname for the state of California and that it will be perceived as such by the purchasing public.

In response, the Applicant pointed to evidence that Cali is the capital of the Valle del Cauca department and the most populous city in southwest Colombia. The TTAB was not persuaded, noting that the fact that the term CALI may identify more than one geographic location does not detract from the term's primary geographic significance as a nickname for the state of California. See In re Cambridge Digital Sys., 1 USPQ2d 1659, 1662 (TTAB 1986) (CAMBRIDGE DIGITAL and design held primarily geographically descriptive of computer systems and parts thereof, where applicant's place of business is Cambridge, Massachusetts, even though there is more than one Cambridge).

Moreover, the Applicant is located in California, and apparently intends to manufacture its goods there as well.

Goods are considered to originate from a geographic location when the record shows that the applicant is located there or the goods are, for example, sold there, manufactured or produced there, or packaged and shipped from there. See, e.g., In re Nantucket Allserve, Inc., 28 USPQ2d 1144 (TTAB 1993) (Product labeling clearly suggested to buyers that NANTUCKET NECTARS soft drinks were not only formulated on Nantucket Island (which they were, and corporate headquarters was also located there), but also manufactured there, whereas they were really manufactured in Worcester, Massachusetts.); In re JT Tobacconists, 59 USPQ2d 1080, 1083 (TTAB 2001) (holding applicant's cigars, cigar cases, and humidors originated from MINNESOTA because they were packaged and shipped from MINNESOTA, and applicant's business was located in MINNESOTA).

Thus, the first and second elements were met.

As for the goods/place association, when the geographic significance of a term is its primary significance and the geographic place is neither obscure nor remote, for purposes of Section 2(e)(2) of the Trademark Act, the goods/place association may ordinarily be presumed from the fact that Applicant's goods originate in or near the place named in the mark. See e.g., In re Spirits of New Merced, LLC, 85 USPQ2d 1614, 1621 (TTAB 2007) (YOSEMITE BEER held geographically descriptive of beer produced and sold in a brewpub in Merced, California, the Board stating that “[s]ince the goods originate at or near [Yosemite National Park], we can presume an association of applicant's beer with the park.”); JT Tobacconists, 59 USPQ2d at 1082 (“[W]here there is no genuine issue that the geographical significance of a term is its primary significance, and where the geographical place named by the term is neither obscure nor remote, a public association of the goods or services with the place may ordinarily be presumed from the fact that the applicant's goods or services come from the geographical place named in the mark.”).

Having found that the first two elements were met, the TTAB presumed that the third element was also met.

Finding the applied-for CALIHEMP mark to be primarily geographically descriptive of the goods, the TTAB affirmed the refusal to register.

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