1210.02(b) Primary Significance
To support a refusal to register geographic matter, the Trademark Act requires that the mark be primarilygeographic, that is, that its primary significance to the relevant consumers in the United States be that of a geographic location. 15 U.S.C. §§1052(e)(2) and (3). See, e.g., In re Newbridge Cutlery Co., 776 F.3d 854, 113 USPQ2d 1445 (Fed. Cir. 2015) (finding evidence insufficient to establish that Newbridge, Ireland is a place known generally to the relevant American public); In re Wada, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999) (NEW YORK held to have primarily geographic significance; Court was not persuaded by assertions that the composite NEW YORK WAYS GALLERY evokes a gallery that features New York "ways" or "styles"); In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987) (evidence insufficient to establish that public in United States would perceive VITTEL as the name of a place where cosmetic products originate; Vittel, France found to be obscure); In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738(TTAB 2016) (reversing a §2(e)(3) refusal of a mark containing the wording MT. RAINIER THE MOUNTAIN OF SEATTLE ESPRESSO & MILK, noting that "[w]hile there is no doubt that the term SEATTLE identifies a generally known geographic location, as it is used in the context of Applicant’s mark, we do not find that the relevant public would consider it to indicate of the origin of the goods"); In re Cheezwhse.com, Inc., 85 USPQ2d 1917 (TTAB 2008) (NORMANDIE CAMEMBERT, with CAMEMBERT disclaimed, held primarily geographically descriptive of cheese because NORMANDIE is the French spelling for Normandy, consumers would recognize NORMANDIE as the equivalent of Normandy, the primary significance of Normandy is a known geographic place in France, and CAMEMBERT is generic for applicant’s goods; Board was not persuaded that the primary significance of NORMANDIE was the ocean liner SS Normandie); In re Cotter & Co., 228 USPQ 202 (TTAB 1985) (the primary significance of WESTPOINT is as the name of the United States Military Academy rather than the town in New York).
When the primary significance of a geographic designation identifying a city is that of a geographic location, the designation may include locations in the metropolitan area of the identified city.
When it is not clear on its face that the primary significance of the mark is that of a geographic location, the record must include substantial evidence to support a conclusion that the mark identifies a place "known generally to the relevant American public." See In re Newbridge Cutlery, 776 F.3d at 862, 113 USPQ2d at 1450. A showing "... that the population of the location is sizable and/or that members of the consuming public have ties to the location (to use the example in Loew’s: that Durango, Mexico, would be recognized by "the Mexican population of this country") is evidence that a location is generally known." Id. at 861, 113 USPQ2d at 1449. A gazetteer entry alone, or a description of the place on the internet, does not necessarily evidence that a place is generally known to the relevant American consuming public. Id. at 863, 113 USPQ2d at 1450. Such evidence must, therefore, be supported by evidence showing the extent to which relevant American consumers would be familiar with the location. Id. at 862, 113 USPQ2d at 1450.
The fact that the proposed mark has meaning or usage other than as a geographic term does not necessarily alter its primarily geographic significance. See TMEP §1210.02(b)(i).
When a geographic term is combined with additional matter (e.g., wording and/or a design element), the examining attorney must determine the primary significance of the composite. See TMEP §§1210.02(c)–1210.02(c)(iii).
See TMEP §1210.04(c) regarding obscure or remote geographic marks.