1210.01    Elements

1210.01(a)    Geographically Descriptive Marks – Test

To support a refusal to register a mark as primarily geographically descriptive under Section 2(e)(2) of the Trademark Act, 15 U.S.C §1052(e)(2), the examining attorney must show that:

  • (1) the primary significance of the mark is a generally known geographic location (see TMEP §§1210.02–1210.02(b)(iv));
  • (2) the goods or services originate in the place identified in the mark (see TMEP §1210.03); and
  • (3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark (see TMEP §§1210.04–1210.04(d)). Note: If the mark is remote or obscure, the public is unlikely to make a goods/place or services/place association (see TMEP §1210.04(c)).

See Spiritline Cruises LLC v. Tour Mgmt. Servs., Inc., 2020 USPQ2d 48324, at *5 (TTAB 2020) (citing In re Nantucket, Inc., 677 F.2d 95, 96-97, 213 USPQ 889, 891 (C.C.P.A. 1982)); see also In re Newbridge Cutlery Co., 776 F.3d 854, 860-61, 113 USPQ2d 1445, 1448-49 (Fed. Cir. 2015); In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1452 (Fed. Cir. 1987); In re JT Tobacconists, 59 USPQ2d 1080, 1081 (TTAB 2001). Relevant purchasers are the purchasing public in the United States of the types of goods or services identified in the involved application. City of London Distillery, Ltd. v. Hayman Grp. Ltd., 2020 USPQ2d 11487, at *6 (TTAB 2020); In re Broken Arrow Beef & Provision, LLC, 129 USPQ2d 1431, 1432 (TTAB 2019) (citing In re Newbridge Cutlery Co., 776 F.3d at 861, 113 USPQ2d at 1449).

1210.01(b)    Geographically Deceptively Misdescriptive Marks – Test

To support a refusal to register a mark as primarily geographically deceptively misdescriptive under Section 2(e)(3) of the Trademark Act, 15 U.S.C §1052(e)(3), the examining attorney must show that:

  • (1) the primary significance of the mark is a generally known geographic location (see TMEP §§1210.02–1210.02(b)(iv));
  • (2) the goods or services do not originate in the place identified in the mark (see TMEP §1210.03);
  • (3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark (see TMEP §§1210.04–1210.04(d)). Note: If the mark is remote or obscure, the public is unlikely to make a goods/place or services/place association (see TMEP §1210.04(c)); and
  • (4) the misrepresentation is a material factor in a significant portion of the relevant consumer’s decision to buy the goods or use the services (see TMEP §§1210.05(c)–(c)(ii)).

In re Miracle Tuesday, LLC, 695 F.3d 1339, 1343, 104 USPQ2d 1330, 1332 (Fed. Cir. 2012); In re Spirits Int’l, N.V., 563 F.3d 1347, 1350–54, 90 USPQ2d 1489, 1490–95 (Fed. Cir. 2009); In re Les Halles De Paris J.V., 334 F.3d 1371, 67 USPQ2d 1539 (Fed. Cir. 2003). See TMEP §1210.01(a) for more information regarding determining relevant purchasers.

Prior to the amendment of the Trademark Act by the NAFTA Implementation Act, it was not necessary to show that the misrepresentation was likely to be a material factor in the consumer’s decision to buy the goods or use the services to establish that a mark was primarily geographically deceptively misdescriptive. However, in In re California Innovations, Inc., the Court of Appeals for the Federal Circuit held that in view of the NAFTA amendments, a showing of public deception is required to establish that a mark is unregistrable under §2(e)(3) of the Trademark Act. 329 F.3d 1334, 1339, 66 USPQ2d 1853, 1856 (Fed. Cir. 2003).

See TMEP §1210.05(c) for further information regarding the distinction between marks comprising deceptive matter under §2(a) of the Act and marks comprising primarily geographically deceptively misdescriptive matter under §2(e)(3) of the Act, and TMEP §§1210.05(c)–c)(ii) regarding the showing that a misrepresentation of the origin of the goods or services is likely to affect the purchaser’s decision to buy the goods or use the services.

1210.01(c)    Geographically Deceptive Marks – Test

As noted in TMEP §1210.05(a), the test for determining whether a mark is primarily geographically deceptively misdescriptive under §2(e)(3) of the Trademark Act is the same as the test for determining whether a mark is deceptive under §2(a) of the Act. 15 U.S.C §§1052(a), (e)(3). To support a refusal of registration on the ground that a geographic term is deceptive under §2(a), the examining attorney must show that:

  • (1) the primary significance of the mark is a generally known geographic location (see TMEP §§1210.02–1210.02(b)(iv));
  • (2) the goods or services do not originate in the place named in the mark (see TMEP §1210.03);
  • (3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark (see TMEP §§1210.04–1210.04(d)). Note: If the mark is remote or obscure, the public is unlikely to make a goods/place or services/place association (see TMEP §1210.04(c)); and
  • (4) the misrepresentation is a material factor in a significant portion of the relevant consumer’s decision to buy the goods or use the services (see TMEP §§1210.05(c)–(c)(ii)).

In re Miracle Tuesday, LLC, 695 F.3d 1339, 1343, 104 USPQ2d 1330, 1332 (Fed. Cir. 2012); In re Spirits Int’l, N.V., 563 F.3d 1347, 1350–54, 90 USPQ2d 1489, 1490–95 (Fed. Cir. 2009); Institut Nat’l des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 1580, 22 USPQ2d 1190, 1195 (Fed. Cir. 1992); In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841, 1843 (TTAB 2012); In re House of Windsor, Inc., 221 USPQ 53 (TTAB 1983) ; see also In re Cal. Innovations Inc., 329 F.3d 1334, 66 USPQ2d 1853 (Fed. Cir. 2003). See TMEP §1210.01(a) for more information regarding determining relevant purchasers.

See TMEP §1210.05(a) for more information regarding the distinction between marks comprising deceptive matter under §2(a) and marks comprising primarily geographically deceptively misdescriptive matter under §2(e)(3), and TMEP §§1210.05(c)–(c)(ii) regarding the showing that a misrepresentation of the origin of the goods or services is likely to affect the purchaser’s decision to buy the goods or use the services.