1210.05   Geographically Deceptive Marks

1210.05(a)   Basis for Refusal

Past Practice. Prior to the amendment of the Trademark Act by the NAFTA Implementation Act, the test for determining whether a mark was primarily geographically deceptively misdescriptive under §2(e)(3) of the Trademark Act differed from the test for determining whether a mark was deceptive under §2(a) of the Act, 15 U.S.C. §1052(a). To establish that a mark was primarily geographically deceptively misdescriptive under §2(e)(3), the examining attorney had to show that the primary significance of the mark was geographic, that purchasers would be likely to believe that the goods or services originated in the place named in the mark, and that the goods or services did not originate in that place. In re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889 (C.C.P.A. 1982). An additional showing of "materiality" was required to establish that a mark was deceptive under §2(a), i.e., a showing that a goods/place or services/place association made by purchasers was "material" to the decision to purchase the goods or services. Bureau Nat’l Interprofessionnel Du Cognac v. Int'l Better Drinks Corp., 6 USPQ2d 1610 (TTAB 1988); In re House of Windsor, Inc., 221 USPQ 53 (TTAB 1983), recon. denied, 223 USPQ 191 (TTAB 1984).

Current Practice. The Court of Appeals for the Federal Circuit has held that with the NAFTA amendments, §2 of the Act "no longer treats geographically deceptively misdescriptive marks differently from geographically deceptive marks," and that a showing of public deception is required to establish that a mark is unregistrable under §2(e)(3). In re Cal. Innovations Inc., 329 F.3d 1334, 1339, 66 USPQ2d 1853, 1856 (Fed. Cir. 2003), reh’g denied, 2003 U.S. App. LEXIS 18883 (Fed. Cir. Aug. 20, 2003). Thus, the test for determining whether, post-NAFTA, a mark is primarily geographically deceptively misdescriptive under §2(e)(3) is now the same as the test for determining whether a mark is deceptive under §2(a). Id., 329 F.3d at 1340, 66 USPQ2d at 1857.

1210.05(b)   Elements of a §2(e)(3) Refusal

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

  • (1) The primary significance of the mark is a generally known geographic location;
  • (2) The goods or services do not originate in the place identified in the mark;
  • (3) Purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark; 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 In re Spirits Int’l, N.V., 563 F.3d 1347, 1350–54, 90 USPQ2d 1489, 1490–95 (Fed. Cir. 2009); Cal. Innovations, 329 F.3d at 1341; 66 USPQ 2d at 1858.

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.

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. 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"). Spirits, 563 F.3d at 1353, 90 USPQ2d at 1493; see Corporacion Habanos, S.A. v. Guantanamera Cigars Co., 102 USPQ2d 1085, 1097 (TTAB 2012).

1210.05(c)   Determining Materiality

To establish that a geographic term is primarily geographically deceptively misdescriptive under 15 U.S.C. §1052(e)(3) or deceptive under §2(a), it must be shown that the goods/place or services/place association made by a consumer is material to the consumer’s decision to purchase those goods/services. In re Cal. Innovations Inc., 329 F.3d 1334, 1340, 66 USPQ2d 1853, 1856 (Fed. Cir. 2003), reh’g denied, 2003 U.S. App. LEXIS 18883 (Fed. Cir. Aug. 20, 2003).

1210.05(c)(i)   Materiality In Cases Involving 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. See In re House of Windsor, Inc., 221 USPQ 53, 56 (TTAB 1983), recon. denied, 223 USPQ 191 (TTAB 1984). Materiality may be established inferentially based on indirect evidence such as gazetteer entries and third-party websites. See Corporacion Habanos, S.A. v. Guantanamera Cigars Co., 102 USPQ2d 1085, 1098 (TTAB 2012). 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, or related goods, are a principal product of the geographical area named by the mark, then the deception will most likely be found to be material.

Furthermore, evidence that a place is famous as a source of the goods at issue raises an inference in favor of materiality. In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841, 1850 (TTAB 2012); see In re Les Halles De Paris J.V., 334 F.3d 1371, 1374, 67 USPQ2d 1539, 1542 (Fed. Cir. 2003). Such evidence supports a presumption that a substantial portion of the relevant consumers is likely to be deceived.

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

  • The place named in the mark is famous as a source of the goods at issue;
  • 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.

See Cal. Innovations, 329 F.3d at 1340, 66 USPQ2d at 1857; In re Save Venice N.Y., Inc., 259 F.3d 1346, 1355, 59 USPQ2d 1778, 1784 (Fed. Cir. 2001); Compania de Licores Internacionales, 102 USPQ2d at 1850; House of Windsor, 221 USPQ at 57.

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. Compania de Licores Internacionales, 102 USPQ2d at 1850.

Note that in U.S. Playing Card Co. v. Harbro, LLC, 81 USPQ2d 1537, 1542 (TTAB 2006), the Board held that the mark VEGAS was not primarily geographically deceptively misdescriptive of playing cards that do not originate in Las Vegas, finding that the opposer failed to establish that the misleading goods/place association would be a material factor in the customer’s decision to purchase the goods. The Board rejected opposer’s argument that it had met the materiality factor by proving that there is a market for cancelled casino cards from Las Vegas casinos, stating that "[a]lthough the evidence demonstrates that consumers are interested in obtaining cards that were used in casinos, the evidence does not establish that they are interested in purchasing playing cards that were manufactured or used in Las Vegas." The Board also disagreed with opposer’s contention that the goods/place association between Las Vegas and playing cards was so strong that materiality could be presumed.

1210.05(c)(ii)   Materiality In Cases Involving Services

In a case involving services, a showing that the geographic location in the mark is known for performing the service is not sufficient, unless it rises to the level of fame. 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).

Therefore, 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. For example, the examining attorney 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.

See In re Les Halles De Paris J.V., 334 F.3d 1371, 1374, 67 USPQ2d 1539, 1541–1542 (Fed. Cir. 2003); In re Consol. Specialty Rests., Inc., 71 USPQ2d 1921, 1927 (TTAB 2004).

This heightened association between the services and geographic place named in the mark raises an inference of deception or materiality for a service mark. The Court of Appeals for the Federal Circuit has provided the following guidance regarding additional evidence that would be sufficient to satisfy the materiality element:

In any event, the record might show that customers would patronize the restaurant because they believed the food was imported from, or the chef was trained in, the place identified by the restaurant’s mark. The importation of food and culinary training are only examples, not exclusive methods of analysis….

Les Halles De Paris, 334 F.3d at 1375, 67 USPQ2d at 1542.

In Consol. Specialty Rests., Inc., the Board held COLORADO STEAKHOUSE and design primarily geographically deceptively misdescriptive of restaurant services. In the course of that holding, the Board found that a mistaken belief that the steaks served in applicant’s restaurant were from Colorado would be material to the customer’s decision to patronize the restaurant, where the record contained the following evidence: gazetteer and dictionary definitions of "Colorado" and "steakhouse;" a United States Department of Agriculture report on cattle inventory; stories excerpted from the LexisNexis® database; and Internet excerpts showing that Colorado was one of the 11 top cattle states in the United States, that Colorado was known for its steaks, that "Colorado steaks" are featured food items in restaurants outside the state, and that politicians from Colorado use "Colorado steaks" as the basis for wagers on sporting events. Id. at 1924-28. The Board stated that "an inference of materiality arises where there is a showing of a ‘heightened association’ between the services and the geographic place or, in other words, a showing of ‘a very strong services-place association.’" Id. at 1928.

See also TMEP §§1203.02–1203.02(g) regarding deceptive marks, and TMEP §1210.08 regarding geographical designations used on or in connection with wines or spirits that identify a place other than the origin of the goods.

1210.05(d)   Procedures for Issuing Geographically Deceptive Refusals

Although the test for determining whether a mark is primarily geographically deceptively misdescriptive under §2(e)(3) is now the same as the test for determining whether a mark is deceptive under §2(a), the statutory provisions with respect to registrability on the Supplemental Register and on the Principal Register under §2(f) are different:

  • Under §23(a) of the Trademark Act, a mark that is primarily geographically deceptively misdescriptive may 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), while a mark that is deceptive may not be registered on the Supplemental Register; and
  • Under §2(f) of the Trademark Act, a mark that is primarily geographically deceptively misdescriptive may be registered if the mark became distinctive of the goods or services in commerce before December 8, 1993, while a mark that is deceptive may not be registered on the Principal Register even upon a showing of acquired distinctiveness.

Accordingly, because the statute expressly prohibits registration of deceptive marks on the Supplemental Register or on the Principal Register under §2(f), the examining attorney will proceed as follows.

1210.05(d)(i)   Neither Applicant Nor Goods/Services Come from the Place Named

To ensure that no geographically deceptively misdescriptive marks claiming use in commerce 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.
  • If the examining attorney determines that the misdescription would be material to the decision to purchase, and the application claims use in commerce prior to December 8, 1993, the examining attorney must issue a nonfinal refusal under §2(a), supported by appropriate evidence.
  • 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 nonfinal refusals under §§2(e)(3) and 2(a), supported by appropriate evidence.

Depending upon the applicant’s response to a nonfinal refusal under §§2(e)(3) and 2(a), 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.
  • 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 misdescriptive 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.

In re S. Park Cigar, Inc., 82 USPQ2d 1507, 1509, n.3 (TTAB 2007). See also Corporacion Habanos, S.A. v. Guantanamera Cigars Co., 86 USPQ2d 1473, 1475 (TTAB 2008) (Board considered only the §2(e)(3) claim in opposition based on both §§2(a) and 2(e)(3)); In re Beaverton Foods, Inc., 84 USPQ2d 1253, 1257 (TTAB 2007) ("[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). Nothing in the statute or legislative history dictates otherwise. Moreover, this analysis is consistent with the practice of the USPTO.").

1210.05(d)(ii)   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 (see TMEP §707), to expedite prosecution, the examining attorney should:
      • Attempt to contact the applicant to determine whether the goods/services 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 by entering a Note to the File in the record. The examining attorney must then follow the appropriate procedure in TMEP §1210.05(d)(i).
      • To ensure the completeness of the record in the event of an appeal, any Office action must also include an information request under 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, 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:
      • Issue a refusal under §2(e)(2) as geographically descriptive (or a requirement for a disclaimer, if appropriate), 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(a) and 2(e)(3) 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 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.

See In re Cheezwhse.com, Inc., 85 USPQ2d 1917 (TTAB 2008).

1210.05(e)   Geographically Deceptive Matter: Case References

In re Spirits Int’l, N.V., 563 F.3d 1347, 90 USPQ2d 1489 (Fed. Cir. 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 Moskovskaya for vodka); In re Les Halles De Paris J.V., 334 F.3d 1371, 1375, 67 USPQ2d 1539, 1542 (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 Cal. Innovations Inc., 329 F.3d 1334, 66 USPQ2d 1853 (Fed. Cir. 2003), reh’g denied, 2003 U.S. App. LEXIS 18883 (Fed. Cir. Aug. 20, 2003) (TTAB found to have applied an outdated standard of review under §2(e)(3), case remanded for application of new, post-NAFTA test); In re Save Venice New York Inc., 259 F.3d 1346, 59 USPQ2d 1778 (Fed. Cir. 2001) (THE VENICE COLLECTION and SAVE VENICE INC. composite marks featuring an image of the winged Lion of St. Mark held primarily geographically deceptively misdescriptive of products that do not originate in Venice, Italy, where an encyclopedia and a gazetteer showed that Venice was a well known center for the manufacture of glass, lace, art objects, jewelry, cotton, and silk textiles); In re Wada, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999) (NEW YORK WAYS GALLERY held primarily geographically deceptively misdescriptive where manufacturing listings and Nexis® excerpts showed that New York was well known as a place where leather goods and handbags are designed and manufactured); In re Premiere Distillery, LLC, 103 USPQ2d 1483 (TTAB 2012) (finding REAL RUSSIAN primarily geographically deceptively misdescriptive for vodka); In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841 (TTAB 2012) (finding OLD HAVANA primarily geographically deceptively misdescriptive for rum and applicant’s claim of acquired distinctiveness insufficient); Corporacion Habanos, S.A. v. Guantanamera Cigars Co., 102 USPQ2d 1085 (TTAB 2012) (finding GUANTANAMERA, a Spanish word meaning "girl from Guantanamo" or "of or from Guantanamo, Cuba," primarily geographically deceptively misdescriptive for cigars not from Cuba); In re Jonathan Drew, Inc., 97 USPQ2d 1640 (TTAB 2011) (finding KUBA KUBA primarily geographically deceptively misdescriptive of cigars, tobacco, and related products that did not originate in Cuba nor would they be made from Cuban seed tobacco); Corporacion Habanos, S.A. v. Anncas, Inc., 88 USPQ2d 1785 (TTAB 2008) (HAVANA CLUB found primarily geographically deceptively misdescriptive of cigars made from Cuban seed tobacco since Havana is world renowned for cigars and consumers would believe that the cigars originate in Havana when, in fact, they do not); In re Cheezwhse.com, Inc., 85 USPQ2d 1917 (TTAB 2008) (NORMANDIE CAMEMBERT held primarily geographically descriptive of cheese because Normandy, France was famous for cheese and the Board presumed that the goods would originate there, and, in the alternative, primarily geographically deceptively misdescriptive for cheese, based on the presumption that the goods would not originate there, since applicant failed to submit information about the origin of the goods); In re Beaverton Foods, Inc., 84 USPQ2d 1253 (TTAB 2007) (NAPA VALLEY MUSTARD CO. for mustard that did not originate in Napa Valley, California held deceptive, where the record contained printouts from various websites showing use of NAPA VALLEY in relation to mustard by third parties, evidence of a widely advertised annual Napa Valley Mustard Festival, evidence of the connection of Napa Valley to wineries and gourmet food, and copies of advertisements for applicant’s goods which imply that the mustard originates in Napa Valley); In re S. Park Cigar, Inc., 82 USPQ2d 1507 (TTAB 2007) (YBOR GOLD held primarily geographically deceptively misdescriptive of cigars and tobacco that do not come from the Ybor City area of Tampa, Florida, given the prominence of Ybor City as a current and historical source of cigars); In re Consol. Specialty Rests., 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); In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694 (TTAB 1992) (LONDON LONDON held deceptive for clothing having no connection with London, given the renown of London as a center for contemporary as well as traditional fashions); In re Sharky's Drygoods Co., 23 USPQ2d 1061 (TTAB 1992) (holding that the juxtaposition of "Paris" with "Beach Club" results in incongruous phrase, and purchasers, thus, will view PARIS BEACH CLUB as humorous mark in which "Paris" is used facetiously rather than as geographic reference); 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 House of Windsor, Inc., 221 USPQ 53 (TTAB 1983), recon. denied, 223 USPQ 191 (TTAB 1984) (BAHIA held deceptive of cigars that do not originate in the Bahia province of Brazil, where the evidence of record was "unequivocal" that tobacco and cigars are important products in the Bahia region).