1210.01(b) Geographically Deceptively Misdescriptive Marks – Test
To support a refusal to register a mark as primarily geographically deceptively misdescriptive, 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); 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).
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 in order to establish that a mark was primarily geographically deceptively misdescriptive. However, in California Innovations, 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). Cal. Innovations, 329 F.3d at 1339, 66 USPQ2d at 1856.
See TMEP §1210.05(c) for further 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)–1210.05(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.