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I. INTRODUCTION
II. ELEMENTS OF §2(e)(3) REFUSAL
A. Determining Materiality - Goods
B. Determining Services-Place Association and Materiality - Services
C. Services-Place Association
D. Materiality
III. PROCEDURES FOR ISSUING GEOGRAPHICALLY DECEPTIVELY MISDESCRIPTIVE
REFUSALS
A. Neither Applicant Nor Goods/Services Come from the Place Named
B. It is Not Clear Whether the Goods/Services Originate From the Place
Named
IV. COMPOSITE MARKS
V. CASE LAW INTERPRETING §2(e)(3)
A. Goods
B. Services
I. 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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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
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,”
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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.
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
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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).
Depending upon the applicant’s response, the examining attorney will ultimately
issue a final refusal under either §2(e)(3) or §2(a):
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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
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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).
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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).
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).
FOOTNOTES:
1
See Examination Guide 01-09 regarding the procedures under §2(a) for deceptive
marks that are not geographically deceptive.
2
In re California Innovations, Inc., 329 F.3d 1334, 1339, 66 USPQ2d 1853, 1856 (Fed.
Cir. 2003).
3
California Innovations, 329 F.3d at 1341; 66 USPQ 2d at 1858.
4
In re Spirits Int’l, N.V., Docket No. 2008-1369, slip op. at 9 (Fed. Cir. Apr. 29, 2009).
5
Id.
6
See id. at 15-16.
7
In re House of Windsor, Inc., 221 USPQ 53 (TTAB 1983).
8
In re Les Halles De Paris J.V., 334 F.3d 1371, 1374, 67 USPQ2d 1539, 1542 (Fed. Cir.
2003).
9
See Spirits, slip op. at 9 (requiring a showing that a substantial portion of the
relevant consumers would be deceived).
10
California 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).
11
House of Windsor, 221 USPQ at 57.
12
In 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.”
13
Les Halles, 334 F.3d at 1373, 67 USPQ2d at 1541.
14
Les Halles, 334 F.3d at 1374, 67 USPQ2d at 1541.
15
Les Halles, 334 F.3d at 1373, 67 USPQ2d at 1541.
16
Les Halles, 334 F.3d at 1373, 67 USPQ2d at 1541-1542; In re Consolidated
Specialty Restaurants, Inc., 71 USPQ2d 1921, 1927 (TTAB 2004).
17
Les 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
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