IP Law Daily, TRADEMARK—TTAB: BUCKEYE CUSTOM E-BIKES mark is not primarily geographically descriptive, (Jul 8, 2025)

By Carolin Dennis, B.Sc., LL.B., LL.M.

Refusal to register the applicant’s BUCKEYE CUSTOM E-BIKES mark due to geographical descriptiveness reversed and remanded to the examining attorney for entry of the disclaimer of the wording CUSTOM E-BIKES.

In a non-precedential decision, the Trademark Trial and Appeal Board (TTAB) reversed a trademark examining attorney’s refusal by register the applicant’s BUCKEYE CUSTOM E-BIKES mark under Section 2(e)(2) of the Trademark Act on the ground that the mark is primarily geographically descriptive. The TTAB determined that the applicant’s mark is not primarily geographically descriptive and that the application may not proceed without a disclaimer of the generic, or at least highly descriptive, wording CUSTOM E-BIKES (In re Buckeye Custom E-Bikes, LLC, No. 98321088 (T.T.A.B. June 27, 2025)).

Background. Buckeye Custom E-Bikes, LLC (applicant) sought to register on the Principal Register the standard character mark BUCKEYE CUSTOM E-BIKES based on acquired distinctiveness of the mark, as a whole, for on-line retail store services featuring electric bicycles and electric bicycle accessories; retail store services featuring electric bicycles and electric bicycle accessories in International Class 35. The examining attorney refused registration of the applicant’s mark under Section 2(e)(2) of the Trademark Act on the ground that the applicant’s proposed mark is primarily geographically descriptive of the identified services and lacks acquired distinctiveness under Section 2(f) of the Trademark Act. When the refusal was made final, the applicant appealed and requested reconsideration. After the examining attorney denied the request for reconsideration, the appeal resumed.

Geographically descriptive. Under Section 2(e)(2) of the Trademark Act, a mark may not be registered on the Principal Register if the mark, when used on or in connection with the goods or services of the applicant is primarily geographically descriptive of them and has not acquired distinctiveness. The elements for proving that a mark is primarily geographically descriptive are: (1) the mark sought to be registered or a portion thereof is the name of a place generally known to the public; (2) the source of the goods or services is the geographic region named in the mark; and (3) the public would believe that the goods or services for which the mark is sought to be registered originate in that place. The TTAB noted that to refuse registration, the geographical meaning must be perceived by the relevant public as the primary meaning and that the geographical significance of the mark is to be assessed as it is used on or in connection with the goods or services. Thus, alternative non-geographic significance is relevant to a primarily geographically descriptive analysis.

With regard to the first prong of the primarily geographically descriptiveness test, the examining attorney argued that the term BUCKEYE is a commonly used nickname for the U.S. state of Ohio. However, as demonstrated by the dictionary and website article evidence of record, the term ‘buckeye,” standing alone, is primarily defined as a tree or shrub or the seed from such tree or shrub. The record also showed that the nickname for the state of Ohio is not “buckeye” but the “Buckeye State.” Further, while the tertiary dictionary definition of “buckeye” is “a native of Ohio,” that definition primarily defines a person, not a geographic location.

Moreover, while the examining attorney submitted six third-party registrations for marks containing the term BUCKEYE where the term “buckeye” was disclaimed or registered under Section 2(f) and the registrant was located in Ohio, the record did not show whether the registrants voluntarily disclaimed the term or sought registration under Section 2(f) on their own initiative. Nevertheless, the applicant submitted countervailing evidence in the nature of nine third-party registrations where the term BUCKEYE was not disclaimed or registered under Section 2(f) and the registrant was located in Ohio.

With respect to the second prong, the examining attorney noted that the applicant’s address is located in Fredericksburg, Ohio, which indicated that the applicant’s services originated in Ohio. With respect to the third prong, the examining attorney contended that because Ohio, the ‘Buckeye state,’ is generally known to the purchasing public as a state in the United States and the applicant’s services do originate there, there is a presumption of a services-place association by the public. Lastly, the examining attorney argued that the addition of the wording CUSTOM E-BIKES in the applicant’s mark did not diminish the geographic significance of the mark because it is merely descriptive/generic wording when used in connection with the identified services.

The TTAB found that while the term “buckeye” may be suggestive of the state of Ohio, the evidence of record demonstrated that the term’s primary significance was not that of a geographic location. Further, as the mark BUCKEYE CUSTOM E-BIKES does not consist of a geographically descriptive term combined with a highly descriptive, generic, or highly suggestive and laudatory term, the mark, as a whole, is not primarily geographically descriptive. Thus, the TTAB determined that the mark was inherently distinctive and proof of acquired distinctiveness was not required.

The TTAB also noted that the wording CUSTOM E-BIKES is generic, or at least highly descriptive, of the applicant’s identified services because the applicant provides custom e-bikes through its retail store services. Accordingly, although the applicant’s mark is not primarily geographically descriptive, the TTAB concluded that the application may not proceed without a disclaimer of the generic, or at least highly descriptive, wording CUSTOM E-BIKES.

Based on the totality of the evidence of record, the TTAB found that the applicant’s mark BUCKEYE CUSTOM E-BIKES is not primarily geographically descriptive of the identified services. Accordingly, the refusal to register the applicant’s mark under Section 2(e)(2) of the Trademark Act was reversed, and as a result, the applicant’s construed request to seek registration under Section 2(f) was deemed moot. However, the application may not proceed without a disclaimer of the wording CUSTOM E-BIKES. The TTAB reopened the application and remanded it to the examining attorney for entry of the disclaimer of the wording CUSTOM E-BIKES.

The Case is No. 98321088.

Judge: Pologeorgis, G.

Attorneys: Andrew P. Lycans (Critchfield Critchfield & Johnston Ltd.) for Buckeye Custom E-Bikes, LLC. Tasneem Hussain for the USPTO.

Companies: Buckeye Custom E-Bikes, LLC

Cases: Trademark USPTO