TMEP 1210.02(c): Geographic Terms Combined With Additional Matter

This is the October 2015 Edition of the TMEP

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1210.02(c)    Geographic Terms Combined With Additional Matter

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 determine the primary significance of the composite. See In re Save Venice New York Inc., 259 F.3d 1346, 59 USPQ2d 1778 (Fed. Cir. 2001) (THE VENICE COLLECTION and SAVE VENICE INC. with an image of the winged Lion of St. Mark, for various goods, held primarily geographically deceptively misdescriptive of products that do not originate in Venice, Italy); In re Wada, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999) (NEW YORK WAYS GALLERY, with a disclaimer of NEW YORK, held primarily geographically deceptively misdescriptive of backpacks, handbags, purses, and similar items); In re Bacardi & Co. Ltd., 48 USPQ2d 1031 (TTAB 1997) (HAVANA SELECT, HABANA CLASICO, OLD HAVANA, HAVANA PRIMO, and HAVANA CLIPPER primarily geographically deceptively misdescriptive of rum); In re Perry Mfg. Co., 12 USPQ2d 1751 (TTAB 1989) (PERRY NEW YORK and design, with a disclaimer of NEW YORK, held deceptive for various items of clothing that originate in North Carolina, and have no connection with New York, because of the renown of New York in the apparel industry); In re Biesseci S.p.A., 12 USPQ2d 1149 (TTAB 1989) (AMERICAN SYSTEM and design of running man, for clothing manufactured in Italy, held deceptive).

See TMEP §§1210.06–1210.06(b) regarding the procedure for examining geographic composites.