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).