1. INTRODUCTION
2. ELEMENTS OF §2(e)(3) REFUSAL
   1. Determining Materiality - Goods
   2. Determining Services-Place Association and Materiality - Services
   3. Services-Place Association
   4. Materiality
3. PROCEDURES FOR ISSUING GEOGRAPHICALLY DECEPTIVELY MISDESCRIPTIVE REFUSALS
   1. Neither Applicant Nor Goods/Services Come from the Place Named
   2. It is Not Clear Whether the Goods/Services Originate From the Place Named
4. COMPOSITE MARKS
5. CASE LAW INTERPRETING §2(e)(3)
   1. Goods
   2. Services

 

1. INTRODUCTION 

   Section 2(e)(3) of the Trademark Act, 15 U.S.C. §1052(e)(3), prohibits the registration of primarily geographically deceptively misdescriptive marks. Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), also prohibits, inter alia, the registration of deceptive matter.¹ This examination guide reviews: (1) the elements of a §2(e)(3) refusal; (2) evidentiary issues with respect to the refusal; (3) procedures for issuing refusals; (4) composite marks; and (5) case law interpreting §2(e)(3). This guide supersedes the Trademark Manual of Examining Procedure (TMEP), 5th edition, to the extent any inconsistency exists.

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2. ELEMENTS OF §2(e)(3) REFUSAL

   Based on the amendment of the Trademark Act by the NAFTA Implementation Act, the Court of Appeals for the Federal Circuit held that §2 “no longer treats geographically deceptively misdescriptive marks differently from geographically deceptive marks,” and that a showing of public deception is required under §2(e)(3) as well as under §2(a). ²

   Accordingly, the elements of a refusal under Trademark Act §2(e)(3) are as follows:³

   1. the primary significance of the mark is a generally known geographic location (see TMEP §1210.02);
   2. the goods or services do not originate in the place identified in the mark (see TMEP §1210.03);
   3. purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark (see TMEP §1210.04); and
   4. the misrepresentation would be a material factor in a significant portion of the relevant consumers’ decision to buy the goods or use the services (see TMEP §1210.05).

   Often, the record is clear that neither the applicant nor the goods/services originate from the place named in the mark. In other cases, although the applicant may not come from the place named, it is not clear whether the goods/service originate in that place. In either situation, after determining that the primary significance of the mark is a generally known geographic location, and that there is a goods/place or services/place association such that the public is likely to believe that the goods or services originate in the place identified in the mark, the examining attorney must then determine whether a geographically deceptively misdescriptive refusal would be warranted. At this point, the assessment turns on materiality – that is, whether a known or possible misdescription in the mark would affect a substantial portion of the relevant consumers’ decision to purchase the goods/services.⁴

   In cases under the doctrine of foreign equivalents, where the place name in the mark appears in a foreign language, the requirement that a substantial portion of the relevant consuming public would likely be deceived raises special issues.⁵ To make a determination about “a substantial portion” in such cases, the examining attorney must consider whether the foreign language place name would be recognizable as such to consumers who do not speak the foreign language, and/or whether consumers who speak the foreign language could constitute a substantial portion of the relevant consumers (e.g., because they are the “target audience”).⁶

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    A. Determining Materiality - Goods

   In determining “materiality,” the Board has stated that it looks to evidence regarding the probable reaction of purchasers to a particular geographical term when it is applied to particular goods.⁷ If the evidence shows that the geographical area named in the mark is sufficiently known to lead purchasers to make a goods-place association, but the record does not show that the relevant goods are a principal product of that geographical area, the deception will most likely be found not to be material. If, however, there is evidence that the relevant goods are a principal product of the geographical area named by the mark, the deception will most likely be found material. Furthermore, evidence that a place is famous as a source of the goods at issue raises an inference in favor of materiality. ⁸ Such evidence supports a presumption that a substantial portion of the relevant consumers is likely to be deceived. ⁹

   Thus, to establish the materiality element for goods, the evidence should show that:¹⁰

   • the place named in the mark is famous as a source of the goods at issue;¹¹
   • the goods in question are a principal product of the place named in the mark; or
   • the goods are or are related to the traditional products of the place named in the mark, or are an expansion of the traditional products of the place named in the mark.¹²

   Internet or Nexis® searches that combine the place name with the name of the goods and terms such as “famous,” “renowned,” “well-known,” “noted for,” “principal,” or “traditional” may be useful to establish materiality.

   See Section V.A. for a list of cases that determined the applicability of §2(e)(3) to goods.

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    B. Determining Services-Place Association and Materiality - Services

   The elements of a §2(e)(3) refusal apply to service marks as well as marks involving goods.¹³ However, application of the services-place association prong is more difficult to satisfy in that the mere showing that the services at issue often emanate from the place named in the mark is not sufficient.¹⁴ This is especially true for restaurant services because, having chosen a particular restaurant, a customer is aware of the geographic location of the service and is less likely to associate the services with the place named in the mark (e.g., a customer is less likely to identify restaurant services with a region of Paris when sitting in a restaurant in New York). ¹⁵

    Services-Place Association

   Before addressing materiality, the examining attorney must satisfy the services-place association prong by providing evidence of an additional reason for the consumer to associate the services with the geographic location invoked by the mark.¹⁶ For example, the examiner could provide evidence that a customer sitting in a restaurant in one location would believe that:

   • the food came from the place named in the mark; or
   • the chef received specialized training in the place identified in the mark; or
   • the menu is identical to a known menu from the geographic location named in the mark.

    Materiality

   This heightened association between the services and geographic place named in the mark raises an inference of deception or materiality for a service mark. Additional evidence that would be sufficient to satisfy the materiality element might consist of showing, for example, that:

   • a substantial composite of customers would patronize the restaurant because they believe the food was imported from the place named in the mark; or
   • a substantial composite of customers would patronize the restaurant because they believe the chef was trained in the place named in the mark.¹⁷

   See Section V.B. for a list of cases that determined the applicability of §2(e)(3) to services.

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3. PROCEDURES FOR ISSUING GEOGRAPHICALLY DECEPTIVELY MISDESCRIPTIVE REFUSALS¹⁸

   A mark that is deceptive under §2(a) may not be registered on the Supplemental Register or on the Principal Register, even upon a showing of acquired distinctiveness.¹⁹

   Currently, however, the Trademark Act allows some marks that are geographically deceptively misdescriptive under §2(e)(3) to be registered on the Supplemental Register (if the mark has been in lawful use in commerce since before December 8, 1993, the date of enactment of the NAFTA Implementation Act) or on the Principal Register under §2(f) (if the mark became distinctive of the goods or services in commerce before December 8, 1993). See TMEP §1210.05(a).

    A. Neither Applicant Nor Goods/Services Come from the Place Named

   In keeping with the holding in California Innovations, to ensure that no geographically deceptively misdescriptive marks claiming use or acquired distinctiveness prior to December 8, 1993 are registered on the Supplemental Register or under §2(f) when it is clear that neither the applicant nor the goods/services come from the place named in the mark, the examining attorney must determine whether the misdescription would be material and follow the procedures outlined below:

   • If the examining attorney determines that the misdescription would not be material to the decision to purchase, no refusal should be made. If the application is otherwise in condition for publication, the examining attorney should approve the mark for publication.²⁰
   • If the examining attorney determines that the misdescription would be material to the decision to purchase, and the application does not claim use prior to December 8, 1993, the examining attorney must issue non-final refusals under §§2(e)(3) and 2(a), supported by appropriate evidence.

   Depending upon the applicant’s response, the examining attorney will ultimately issue a final refusal under either §2(e)(3) or §2(a):

   • If the applicant’s response does not claim use or acquired distinctiveness prior to December 8, 1993, the examining attorney must withdraw the §2(a) refusal and issue a final refusal under §2(e)(3), if otherwise appropriate.²¹
   • In the rare circumstance that the applicant responds by claiming use prior to December 8, 1993 and amends to the Supplemental Register, or establishes that the mark acquired distinctiveness under §2(f) prior to December 8, 1993, to ensure that a geographically deceptively mark will not be allowed to register, the examining attorney must withdraw the §2(e)(3) refusal and issue a final refusal under §2(a), if otherwise appropriate.²²
   
   

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    B. It is Not Clear Whether the Goods/Services Originate From the Place Named

   If the applicant does not come from the place named in the mark, and the record does not indicate whether the goods/services originate in that place (see TMEP §1210.03), the examining attorney must do the following:

   1. If (a) the entire mark would not be geographically descriptive (making disclaimer an option), (b) there are no other substantive refusals (making an examiner’s amendment an option), and (c) the application could be put into condition for publication by examiner’s amendment (TMEP §707), to expedite prosecution, the examining attorney should:

      • Attempt to contact the applicant to determine whether the goods originate in the place named and, if so, to obtain authorization for a disclaimer and for any other amendments that would put the application in condition for approval for publication.
      • If the applicant states that the goods/services do not originate in the place named, the examining attorney must so indicate in a note to the file. The examining attorney must then follow the appropriate procedure in Section III.A.
      • To ensure the completeness of the record in the event of an appeal, any Office action must also include an information request under Rule 2.61(b), 37 C.F.R. §2.61(b), asking whether the goods/services originate in the place named.
      
      

   2. If the examining attorney is unable to reach the applicant or cannot obtain authorization for an examiner’s amendment, or if the applicant indicates that they do not know where the goods/services will originate from, or if an Office action is otherwise necessary to make substantive refusals or requirements that cannot be satisfied by examiner’s amendment, the examining attorney must proceed as follows:²³

      • Issue a refusal under §2(e)(2) as geographically descriptive (or a requirement for a disclaimer, if appropriate²⁴ ), based on the presumption that the goods/services come from the place named in the mark; and
      • If the misdescription would be material, issue alternative refusals, supported by evidence, under §2(e)(3) and 2(a) as geographically deceptively misdescriptive, based on the alternative presumption that the goods do not come from the place named; and
      • Issue any other relevant refusals and requirements; and
      • Issue an information request under Rule 2.61(b), 37 C.F.R. §2.61(b), asking where the goods/services originate. This written request is made to ensure the completeness of the record in the event of an appeal.
      
      

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4. COMPOSITE MARKS

   Composite marks (i.e., those that include both a geographic place name and arbitrary or descriptive wording and/or designs) present unique issues in regard to both geographically descriptive and misdescriptive refusals. When evaluating whether the mark’s primary significance is a generally known geographic location, a composite mark must be evaluated as a whole.²⁵ In order to do so, the examiner may also consider the significance of each element within the mark.²⁶

   For example, the mark PARIS BEACH CLUB, for clothing, was held not to be perceived as primarily geographic.²⁷ Because Paris is known for haute couture, is not located on an ocean or lake and does not have a beach, the Board found that the juxtaposition of PARIS with BEACH CLUB resulted in an incongruous phrase and that the word PARIS would be viewed as a facetious rather than a geographic reference. The mark NEW YORK WAYS GALLERY, however, was found to be geographically deceptive.²⁸ The Board determined that (1) NEW YORK was not an obscure geographical term; (2) NEW YORK was known as a place where the goods at issue were designed, manufactured, and sold; and (3) the primary geographic significance was not lost by the addition of WAYS GALLERY to NEW YORK. Likewise, in the YBOR GOLD case, the Board held that the mere addition of the word GOLD to the geographic designation YBOR did not result in an arbitrary, fanciful, or suggestive composite²⁹ The Board determined that GOLD connoted the high quality of the goods and thus did not detract from the geographic significance of YBOR or negate the primarily geographic significance of the mark as a whole.

   If the examining attorney determines that the primary significance of a composite mark is that of a generally known geographic location, the examining attorney must follow the procedures described in Sections III.A and B to determine the appropriate refusal(s).

   If the examining attorney determines that the primary significance of a composite mark is that of a generally known geographic location, the examining attorney must follow the procedures described in Sections III.A and B to determine the appropriate refusal(s).

   The determination of whether the primary significance of a composite mark as a whole is that of the geographic location named in the mark is difficult. Therefore, examining attorneys must consult their senior or managing attorney before going forward when they have made a preliminary determination that the primary significance of the mark as a whole is not geographic. The senior or managing attorney will make the final determination or may seek guidance from the Office of Legal Policy regarding such marks.

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5. CASE LAW INTERPRETING §2(e)(3)  

   A. Goods

   The following cases determined the applicability of §2(e)(3) to goods:

    

   In re Spirits Int’l, N.V., Docket No. 2008-1369, slip op. at 9 (Fed. Cir. Apr. 29, 2009) (Remanding case to Trademark Trial and Appeal Board to determine whether a substantial portion of the relevant consumers would translate and be materially deceived by the Russian term Moscovskaya for vodka); In re California Innovations, Inc., 329 F.3d 1334, 66 USPQ 2d 1853 (Fed. Cir. 2003) (Case remanded to Trademark Trial and Appeal Board to determine whether the term California was material to the purchase of thermally insulated beverage containers); In re South Park Cigar, Inc., 82 USPQ2d 1507 (TTAB 2007) (YBOR GOLD for cigars refused and upheld under Section 2(e)(3); Ybor City is a place name in Tampa, Florida); In re Beaverton Foods, Inc., 84 USPQ2d 1253, (TTAB 2007) (NAPA VALLEY MUSTARD held primarily geographically deceptively misdescriptive of condiments, namely, mustard); In re Cheezwhse.com, Inc., 85 USPQ2d 1917 (TTAB 2008) (NORMANDIE CAMEMBERT held primarily geographically descriptive or, in the alternative, primarily geographically deceptively misdescriptive for cheese; the applicant failed to respond to a 37 C.F.R. §2.61(b) information request as to the origin of the goods); Corporacion Habanos, S.A. v. Guantanamera Cigars Company, 86 USPQ2d 1473 (TTAB 2008) (GUANTANAMERA held primarily geographically deceptive for cigars); Corporacion Habanos, S.A. v. Anncas, Inc., 88 USPQ2d 1785 (TTAB 2008) (HAVANA CLUB primarily geographically deceptively misdescriptive of cigars made from Cuban seed tobacco).

   Non-precedential cases: In re Eastern Watch Co, Serial No. 78402643, March 27, 2006 (TTAB) (SWISSGOLD primarily geographically deceptively misdescriptive of watches and parts); In re Paris Croissant Co., Serial No. 78598374, September 10, 2007 (TTAB) (Paris Baguette & Design for food items held primarily geographically deceptively misdescriptive); In re Vanity Fair, Inc., Serial No. 78515219, December 17, 2007 (TTAB) (French & Flirty primarily geographically deceptively misdescriptive with respect to clothing, including lingerie).

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   B. Services

    

   The following cases determined the applicability of §2(e)(3) to services:

   In re Les Halles De Paris J.V., 334 F.3d 1371, 67 USPQ2d 1539 (Fed. Cir. 2003)(Court found that the record did not show that a diner at the restaurant in question would identify the region in Paris named in the mark as a source of the restaurant services or that a material reason for the choice of the restaurant was its identity with the region in Paris); In re Consolidated Specialty Restaurants, Inc., 71 USPQ2d 1921 (TTAB 2004)(Board found that patrons of applicant’s restaurants, COLORADO STEAKHOUSE, would believe the steaks that were served would come from Colorado).

 

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¹See Examination Guide 01-09 regarding the procedures under §2(a) for deceptive marks that are not geographically deceptive.
²In re California Innovations, Inc., 329 F.3d 1334, 1339, 66 USPQ2d 1853, 1856 (Fed. Cir. 2003).
³California Innovations, 329 F.3d at 1341; 66 USPQ 2d at 1858.
⁴In re Spirits Int’l, N.V., Docket No. 2008-1369, slip op. at 9 (Fed. Cir. Apr. 29, 2009).
⁵Id.
⁶See id. at 15-16.
⁷In re House of Windsor, Inc., 221 USPQ 53 (TTAB 1983).
⁸In re Les Halles De Paris J.V., 334 F.3d 1371, 1374, 67 USPQ2d 1539, 1542 (Fed. Cir. 2003).
⁹See Spirits, slip op. at 9 (requiring a showing that a substantial portion of the relevant consumers would be deceived).
¹⁰California Innovations, 329 F.3d at 1340, 66 USPQ2d at 1857; House of Windsor, 221 USPQ at 56-57; Trademark Manual of Examining Procedure (TMEP) §1210.05(b) (5th ed. 2007).
¹¹House of Windsor, 221 USPQ at 57.
¹²In re Save Venice N.Y., Inc., 259 F.3d 1346, 1355, 59 USPQ2d 1778, 1784 (Fed. Cir. 2001). The Court found that “the registrability of a geographic mark may be measured against the public’s association of that region with both its traditional goods and any related goods or services that the public is likely to believe originate there.”
¹³Les Halles, 334 F.3d at 1373, 67 USPQ2d at 1541.
¹⁴Les Halles, 334 F.3d at 1374, 67 USPQ2d at 1541.

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¹⁵Les Halles, 334 F.3d at 1373, 67 USPQ2d at 1541.
¹⁶Les Halles, 334 F.3d at 1373, 67 USPQ2d at 1541-1542; In re Consolidated Specialty Restaurants, Inc., 71 USPQ2d 1921, 1927 (TTAB 2004).
¹⁷Les Halles, 334 F.3d at 1375, 67 USPQ2d at 1542; Consolidated Specialty Restaurants, 71 USPQ2d at 1929.
¹⁸ The procedures apply to applications under §§44 and 66(a) as well as those under §1.
¹⁹ 15 U.S.C. §1052(f).
²⁰ “If the materiality element cannot be supported, then a mark which otherwise would be primarily merely geographically deceptively misdescriptive is registrable on the Principal Register.” In re Beaverton Foods, Inc., 84 USPQ2d 1253, 1256, n.2 (TTAB 2007).
²¹ In re South Park Cigar, Inc., 82 USPQ2d 1507 (TTAB 2007); Corporacion Habanos, S.A. v. Guantanamera Cigars Company, 86 USPQ2d 1473 (TTAB 2008).
²² “[T]he Section 2(f) grandfather clause does not protect those ‘geographically deceptive’ marks that would have been considered unregistrable under Section 2(a) prior to NAFTA…. [W]here an applicant is seeking registration for a mark with a geographic term on the Principal Register under Section 2(f) based on a claim that the mark had acquired distinctiveness prior to December 8, 1993, a geographically deceptive mark is properly refused registration under Section 2(a).” Beaverton Foods, 84 USPQ2d at 1256-1257.
²³ In re Cheezwhse.com Inc., 85 USPQ2d 1917 (TTAB 2008).
²⁴ In some cases, a disclaimer may not be appropriate because the mark is unitary.
²⁵ Save Venice, 259 F.3d at 1352, 59 USPQ2d at 1782.
²⁶ Id.
²⁷ In re Sharky's Drygoods Co., 23 USPQ2d 1061 (TTAB 1992).
²⁸ In re Hiromichi Wada, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999).
²⁹ South Park Cigar, 82 USPQ2d at 1513.