T.M.E.P. § 1210.06
Procedure for Examining Geographic Composite Marks
Executive summary:
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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) et seq.
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);
(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, 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 should 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 nondisclaimed component because a mark cannot be registered if all the components have been disclaimed. See TMEP §§1213 et seq. 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, if it is not barred by other section(s) of the Act. See TMEP §1210.07(a).
1210.06(b) Marks That Include Primarily Geographically Deceptively Misdescriptive and Deceptive Terms Combined With Additional Matter
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, then the examining attorney should refuse registration of the mark as a whole under both §2(e)(3) and §2(a). See TMEP §1210.05(a).
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).
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 Save Venice New York Inc., 259 F.3d 1346, 59 USPQ2d 1778 (Fed. Cir. 2001); In re Wada, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999).
See TMEP §1210.05(a) regarding the basis for refusal of marks that are primarily geographically deceptively misdescriptive.