1210.07    Supplemental Register and §2(f)

1210.07(a)    Registrability of Geographic Terms on the Supplemental Register

Primarily Geographically Descriptive Marks. A term that is primarily geographically descriptive of the goods/services under §2(e)(2) may be registered on the Supplemental Register, if it is not barred by other section(s) of the Act. See TMEP §714.05(a)(i). However, in certain circumstances, a primarily geographically descriptive mark may be considered incapable. See In re Bee Pollen from Eng. Ltd., 219 USPQ 163 (TTAB 1983) (finding BEE POLLEN FROM ENGLAND incapable of distinguishing bee pollen from England); Mineco, Inc. v. Lone Mountain Turquoise Mine, 217 USPQ 466 (TTAB 1983) (finding LONE MOUNTAIN incapable of distinguishing turquoise from the Lone Mountain Mine).

Primarily Geographically Deceptively Misdescriptive Marks. A mark that is found to be primarily geographically deceptively misdescriptive under §2(e)(3) may not be registered on the Supplemental Register unless the mark has been in lawful use in commerce since before December 8, 1993, the date of enactment of the NAFTA Implementation Act. Section 23(a) of the Trademark Act, 15 U.S.C. §1091(a).  If the applicant claims use prior to December 8, 1993 and seeks registration on the Supplemental Register, or amends to the Supplemental Register, the examining attorney must refuse registration under §2(a). See TMEP §1210.05(d)(i).

Geographically Deceptive Marks. A mark that is deceptive under §2(a) may not be registered on the Supplemental Register. In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1696 (TTAB 1992).

NOTE: A mark in a §66(a) application cannot be registered on the Supplemental Register under any circumstances. 15 U.S.C. §1141h(a)(4); 37 C.F.R. §§2.47(c)  and 2.75(c).

1210.07(b)    Registrability of Geographic Terms under §2(f)

Primarily Geographically Descriptive Marks. A term that is primarily geographically descriptive of the goods/services under §2(e)(2) may be registered on the Principal Register if it is shown to have acquired distinctiveness under §2(f). See TMEP §714.05(a)(i) regarding a §2(f) claim submitted with an allegation of use in response to a refusal and §§1212–1212.10 regarding §2(f).

Primarily Geographically Deceptively Misdescriptive Marks. A mark that is primarily geographically deceptively misdescriptive under §2(e)(3) may not be registered under §2(f) unless the mark became distinctive of the goods or services in commerce before December 8, 1993, the date of enactment of the NAFTA Implementation Act. See In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841, 1852 (TTAB 2012) ; In re Boyd Gaming Corp., 57 USPQ2d 1944, 1947 (TTAB 2000) ; Fred Hayman Beverly Hills Inc. v. Jacques Bernier Inc., 38 USPQ2d 1691, 1692 (TTAB 1996).

If the applicant claims that the mark acquired distinctiveness prior to December 8, 1993, the examining attorney must refuse registration under §2(a). See TMEP §1210.05(d)(i).

Geographically Deceptive Marks. A mark that is deceptive under §2(a) may not be registered on the Principal Register even under §2(f).

Section 2(f) in Part. An applicant may claim that a geographic component of a mark has acquired distinctiveness under §2(f). See TMEP §1212.02(f) regarding claims of acquired distinctiveness as to a portion of a mark. Thus, if the examining attorney requires a disclaimer of matter that is primarily geographically descriptive under §2(e)(2), the applicant may seek to overcome the disclaimer requirement by submitting a showing that the geographic component has acquired distinctiveness under §2(f). If the applicant is able to establish to the satisfaction of the examining attorney that the geographic component has acquired distinctiveness, the examining attorney will approve the mark for publication with a notation that there is a claim of distinctiveness under §2(f) as to the geographic component, if appropriate.