1210.02(c)    Geographic Terms Combined With Additional Matter

A geographic composite mark is one composed of geographic matter coupled with additional matter (e.g., wording and/or a design element). When examining such a mark, the examining attorney must determine the primary significance of the composite. See In re Save Venice New York Inc., 259 F.3d 1346, 59 USPQ2d 1778 (Fed. Cir. 2001) (THE VENICE COLLECTION and SAVE VENICE INC. with an image of the winged Lion of St. Mark, for various goods, held primarily geographically deceptively misdescriptive of products that do not originate in Venice, Italy); In re Wada, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999) (NEW YORK WAYS GALLERY, with a disclaimer of NEW YORK, held primarily geographically deceptively misdescriptive of backpacks, handbags, purses, and similar items); In re Bacardi & Co. Ltd., 48 USPQ2d 1031 (TTAB 1997) (HAVANA SELECT, HABANA CLASICO, OLD HAVANA, HAVANA PRIMO, and HAVANA CLIPPER primarily geographically deceptively misdescriptive of rum); In re Perry Mfg. Co., 12 USPQ2d 1751 (TTAB 1989) (PERRY NEW YORK and design, with a disclaimer of NEW YORK, held deceptive for various items of clothing that originate in North Carolina, and have no connection with New York, because of the renown of New York in the apparel industry); In re Biesseci S.p.A., 12 USPQ2d 1149 (TTAB 1989) (AMERICAN SYSTEM and design of running man, for clothing manufactured in Italy, held deceptive).

See TMEP §§1210.06–1210.06(b) regarding the procedure for examining geographic composites.

1210.02(c)(i)    Two Geographic Terms Combined

When two geographic terms are combined in the same mark, the primary significance of the composite may still be geographic, if purchasers would believe that the goods or services originate from or are rendered in both of the locations named in the mark. See In re Narada Prods., Inc., 57 USPQ2d 1801, 1803 (TTAB 2001) (holding CUBA L.A. primarily geographically deceptively misdescriptive of musical recordings and live musical performances that did not originate in Cuba or Los Angeles, the Board finding that purchasers would understand the composite as a reference to the two places named rather than to "some mythical place called ‘Cuba L.A.’"); In re London & Edinburgh Ins. Grp. Ltd., 36 USPQ2d 1367 (TTAB 1995) (holding LONDON & EDINBURGH INSURANCE primarily geographically descriptive of insurance and underwriting services that are rendered or originate in the cities of London and Edinburgh).

Repeating a geographical term does not alter the geographical significance of that term. In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694 (TTAB 1992) (holding LONDON LONDON deceptive for clothing having no connection with London, given the renown of London as a center for contemporary as well as traditional fashions).

1210.02(c)(ii)    Geographic Terms Combined With Descriptive or Generic Matter

Generally, the addition of a highly descriptive or generic term to the name of a geographic place does not alter its primarily geographic significance. Spiritline Cruises LLC v. Tour Mgmt. Servs., Inc., 2020 USPQ2d 48324 (TTAB 2020) (holding CHARLESTON HARBOR TOURS primarily geographically descriptive of various travel tour and cruise services because TOURS is generic for the services and CHARLESTON HARBOR is a well known harbor in Charleston, South Carolina); In re Cheezwhse.com, Inc., 85 USPQ2d 1917 (TTAB 2008) (holding NORMANDIE CAMEMBERT with CAMEMBERT, disclaimed, primarily geographically descriptive of cheese because Normandy, France was famous for cheese and the Board presumed that the goods would originate there since applicant failed to submit information about the origin of the goods); In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001) (holding MINNESOTA CIGAR COMPANY primarily geographically descriptive of cigars); In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998) (holding CAROLINA APPAREL primarily geographically descriptive of retail clothing store services); In re Chalk’s Int’l Airlines Inc., 21 USPQ2d 1637 (TTAB 1991) (holding PARADISE ISLAND AIRLINES primarily geographically descriptive of the transportation of passengers and goods by air, because the applicant’s services included flights to and from Paradise Island, Bahamas, even though the flights were not based there); In re Wine Soc’y of Am. Inc., 12 USPQ2d 1139 (TTAB 1989) (holding THE WINE SOCIETY OF AMERICA primarily geographically descriptive of wine club membership services); In re Cal. Pizza Kitchen Inc., 10 USPQ2d 1704 (TTAB 1988) (holding CALIFORNIA PIZZA KITCHEN, with a disclaimer of PIZZA KITCHEN, primarily geographically descriptive of restaurant services).

1210.02(c)(iii)    Arbitrary, Fanciful, or Suggestive Composites

If, when viewed as a whole, a composite mark would not be likely to be perceived as identifying the geographic origin of the goods or services (i.e., the mark as a whole is not primarily geographically descriptive, primarily geographically deceptively misdescriptive, or deceptive), then the mark is regarded as arbitrary, fanciful, or suggestive. See In re Sibony, 2021 USPQ2d 1036, at *11-13 (TTAB 2021) (holding REPUBLIC OF LONDON for clothing items not primarily geographically deceptively misdescriptive under §2(e)(3) because the primary significance of the mark as a whole was a fictitious or whimsical location); In re Sharky’s Drygoods Co., 23 USPQ2d 1061 (TTAB 1992) (holding PARIS BEACH CLUB for T-shirts and sweatshirts not deceptive under §2(a) because Paris "is not located on an ocean or lake, and does not have a beach," thus, "[t]he juxtaposition of Paris with Beach Club results in an incongruous phrase;" and the inclusion of "Paris" in the mark was humorous or facetious because Paris is known for haute couture and purchasers would not expect T-shirts and sweatshirts to originate there).