1210.06 Procedure for Examining Geographic Composite Marks

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 first determine the primary significance of the composite. See TMEP §§1210.02(c)–1210.02(c)(iii).

Composite marks present unique issues in regard to both geographically descriptive and misdescriptive refusals. When evaluating whether the mark’s primary significance is a generally known geographic location, a composite mark must be evaluated as a whole. See In re Save Venice New York Inc., 259 F.3d 1346,1352, 59 USPQ2d 1778, 1782 (Fed. Cir. 2001); In re Morinaga Nyugyo Kabushiki Kaisha, __ USPQ2d __ (TTAB 2016) . In order to do so, the examining attorney may also consider the significance of each element within the mark. In re Save Venice New York Inc., 259 F.3d at 1352, 59 USPQ2d at 1782 .

For example, the mark PARIS BEACH CLUB, for clothing, was held not to be perceived as primarily geographic. In re Sharky's Drygoods Co., 23 USPQ2d 1061 (TTAB 1992) . 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. Id. at 1062. The mark NEW YORK WAYS GALLERY, however, was found to be geographically deceptive. In re Wada, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999). 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 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 case of the mark YBOR GOLD, 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 composite. In re S. Park Cigar, Inc., 82 USPQ2d 1507 (TTAB 2007) . 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. Id. at 1513.

Depending on the primary significance of the composite, the examining attorney will handle the geographic issue in a geographic composite mark in one of the following ways:

(1) If the examining attorney finds that the mark, when viewed as a whole, is arbitrary, fanciful, or suggestive, he or she will approve the mark for publication without evidence that the mark has acquired distinctiveness under §2(f). However, examining attorneys must consult their senior or managing attorney before going forward when they have made a preliminary determination that the primary significance of the mark as a whole is not geographic. The senior or managing attorney will make the final determination or may seek guidance from the Office of Legal Policy, within the Office of the Deputy Commissioner for Trademark Examination Policy;
(2) If the examining attorney finds that the mark is primarily geographically descriptive under §2(e)(2) without a showing of acquired distinctiveness, primarily geographically deceptively misdescriptive under §2(e)(3), or deceptive under §2(a), he or she will refuse registration of the mark as a whole; or
(3) If the examining attorney finds that the geographic matter is a separable part of the mark, the examining attorney’s action will depend on whether the matter is primarily geographically descriptive, primarily geographically deceptively misdescriptive, or deceptive. See TMEP §1210.06(a) regarding primarily geographically descriptive composites, and TMEP §1210.06(b) regarding primarily geographically deceptively misdescriptive and deceptive composites.

1210.06(a) Marks That Include Primarily Geographically Descriptive Terms Combined With Additional Matter

If a composite mark comprises a geographic term that is primarily geographically descriptive of the goods or services under §2(e)(2), and the mark as a whole would be likely to be perceived as indicating the geographic origin of the goods or services, then the examining attorney must consider: (1) whether the geographic term is a separable element in the mark; and (2) the nature of the additional matter that makes up the composite mark.

If the geographic term is not a separable element or if none of the additional matter that makes up the composite mark is inherently distinctive (e.g., it is merely descriptive or incapable), then the examining attorney must refuse registration of the entire mark on the Principal Register pursuant to §2(e)(2).

If the geographic term is a separable element and the additional matter making up the mark is inherently distinctive as applied to the goods or services (i.e., coined, arbitrary, fanciful, or suggestive), the applicant may either: (1) register the mark on the Principal Register with a disclaimer of the geographic term; or (2) establish that the geographic term has acquired distinctiveness under §2(f).

A disclaimer is appropriate where the geographic component is a separable feature of the mark, and the composite mark includes an inherently distinctive, non-disclaimed component (e.g., coined, arbitrary, fanciful, or suggestive wording or design). The composite mark must include a non-disclaimed component because a mark cannot be registered if all the components have been disclaimed. See TMEP §§1213-1213.11 regarding disclaimer.

When the examining attorney requires a disclaimer of primarily geographically descriptive matter, the applicant may seek to overcome the disclaimer requirement by submitting a showing that the geographic term has become distinctive under §2(f). See TMEP §§1210.07(b) and 1212.02(f) regarding §2(f) claims as to a portion of the mark.

A term that is primarily geographically descriptive of the goods or services under §2(e)(2) may be registered on the Supplemental Register in an application under §1 or §44 of the Trademark Act, if it is not barred by other section(s) of the Act. See TMEP §1210.07(a).

To help ensure that determinations concerning the primary significance of composite marks are handled consistently, examining attorneys must consult their senior or managing attorney before going forward when they have made a preliminary determination that the primary significance of the mark as a whole is not geographic. The senior or managing attorney will make the final determination or may seek guidance from the Office of Legal Policy regarding such marks.

1210.06(b) Marks That Include Primarily Geographically Deceptively Misdescriptive and Deceptive Terms Combined With Additional Matter

Geographically deceptive and primarily geographically deceptively misdescriptive matter need not comprise the entire mark, or even the dominant portion of the mark, to form the basis for a refusal under §2(a) or §2(e)(3). See 15 U.S.C §1052(a), (e)(3). However, a §2(e)(3) refusal is not appropriate unless the evidence shows that the mark as a whole would likely be perceived as indicating the geographic origin of the goods or services. In re Morinaga Nyugyo Kabushiki Kaisha, __ USPQ2d __, __ (TTAB 2016). Likewise, a mark should not be refused under §2(a) unless the relevant geographic matter, when considered in the context of the mark as a whole, is deceptive. Id. at __ ("Even under Trademark Act Section 2(a), which permits a narrower focus on the allegedly deceptive matter, a refusal to register may not be based on a term taken out of context when doing so would change its significance in the mark.").

If a composite mark includes matter that is primarily geographically deceptively misdescriptive within the meaning of §2(e)(3) or deceptive under §2(a), and the mark as a whole would be likely to be perceived as indicating the geographic origin of the goods or services, the examining attorney must follow the procedures outlined above for refusing registration. See TMEP §1210.05(d).

A composite mark that is deceptive under §2(a) cannot be registered, even with a disclaimer of the geographic component. In re Perry Mfg. Co., 12 USPQ2d 1751, 1751-52 (TTAB 1989). Similarly, a disclaimer of the geographic matter will not overcome a §2(e)(3) refusal, even if the mark was in use prior to December 8, 1993. In re Wada, 194 F.3d 1297, 52 USPQ2d 1539,1542 (Fed. Cir. 1999).

See TMEP §1210.05(a) regarding the basis for refusal of marks that are primarily geographically deceptively misdescriptive, and TMEP §1210.05(d) for procedures for issuing such refusals.