1210.03 Geographic Origin of the Goods or Services
The question of whether a term is primarily geographically descriptive under §2(e)(2), primarily geographically deceptively misdescriptive under §2(e)(3), or geographically deceptive under §2(a) depends on whether the mark identifies the place from which the goods or services originate. Goods or services may be said to "originate" from a geographic location if, for example, they are manufactured, produced, or sold there. See Fred Hayman Beverly Hills Inc. v. Jacques Bernier Inc., 38 USPQ2d 1691 (TTAB 1996) (RODEO DRIVE held primarily geographically deceptively misdescriptive of perfume, where opposer’s evidence showed that a significant number of Rodeo Drive retailers sell "prestige" fragrances, and that the public would be likely to make the requisite goods/place association between perfume and Rodeo Drive). Cf. In re Jacques Bernier Inc., 894 F.2d 389, 13 USPQ2d 1725 (Fed. Cir. 1990) (RODEO DRIVE held not primarily geographically deceptively misdescriptive of perfume because of the lack of persuasive evidence of a goods/place association in the ex parte record).
A wide variety of factors must be considered in determining the origin of a product or service. For example, a product might be found to originate from a place if the main component or ingredient is made in that place. See In re Joint-Stock Co. "Baik," 80 USPQ2d 1305 (TTAB 2006) (BAIKALSKAYA – the Russian equivalent of "from Baikal" or "Baikal’s" – held primarily geographically descriptive of vodka, where the record showed that applicant was located in Irkutsk, Russia, a city near Lake Baikal, and that applicant’s vodka is made from the water of Lake Baikal). However, the fact that a product may have been produced in a geographic style under the direction of someone trained from that geographic place is not a sufficient connection to deem the goods originate from there. See In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841, 1850 (TTAB 2012) (holding OLD HAVANA primarily geographically deceptively misdescriptive for rum despite applicant’s arguments including that the rum was produced in a "Cuban" or "Havanese" style under the direction of someone trained in Cuba and that purchasers know the rum could not come from Cuba because of the embargo). The relevant inquiry is whether there is a connection between the goods and the place named in the mark. See In re Miracle Tuesday, LLC, 695 F.3d 1339, 1343, 104 USPQ2d 1330, 1332 (Fed. Cir. 2012) (holding that the fact that the designer of applicant’s products lived in Paris more than 25 years before was insufficient to establish that goods now marketed under JPK PARIS 75, and design, originated there).
Goods and services do not always originate in the applicant’s place of business. See In re Mankovitz, 90 USPQ2d 1246 (TTAB 2009) (THE MONTECITO DIET held not primarily geographically descriptive of printed publications, on-line journals, or information services in the fields of health, nutrition, illness prevention, detoxification, and diet and lifestyle choices, the Board finding that there was "no connection between Montecito and applicant’s goods and services other than applicant’s address"); In re John Harvey & Sons Ltd., 32 USPQ2d 1451, 1455 (TTAB 1994) (HARVEYS BRISTOL CREAM not primarily geographically descriptive of cakes flavored with sherry wine, the Board finding that neither applicant’s sherry wines nor applicant’s cakes come from Bristol, England, where "the only connection appears to be that applicant’s headquarters are located there and that applicant’s sherry wine was bottled there at one time"); In re Nantucket Allserve Inc., 28 USPQ2d 1144 (TTAB 1993) (NANTUCKET NECTARS held primarily geographically descriptive of soft drinks, even though the goods were manufactured elsewhere, where the record showed that applicant’s headquarters and research and development division were on Nantucket; the distributor of the goods was located on Nantucket; the goods were sold in the applicant’s store on Nantucket; and the specimens were labels that bore a picture of Nantucket, stated that the goods were "born" or "created" on Nantucket, and mentioned no other geographic location); In re Chalk’s Int’l Airlines Inc., 21 USPQ2d 1637 (TTAB 1991) (PARADISE ISLAND AIRLINES held primarily geographically descriptive of the transportation of passengers and goods by air, because the applicant’s services included flights to and from Paradise Island, Bahamas, even though the flights were not based there); In re Fortune Star Products Corp., 217 USPQ 277 (TTAB 1982) (NIPPON held not deceptive of, inter alia, radios and televisions because, although the applicant is an American corporation, the goods are made in Japan.)
When the goods or services may be said to originate both in the geographic place named in the mark and outside that place, registration will normally be refused on the ground that the mark is primarily geographically descriptive under §2(e)(2) of the Trademark Act. In re Cal. Pizza Kitchen Inc., 10 USPQ2d 1704, 1706 n.2 (TTAB 1988) (CALIFORNIA PIZZA KITCHEN for restaurant services held primarily geographically descriptive, where the services were rendered both in California and elsewhere).
If it is unclear where the goods/services originate or will originate because the applicant does not come from the place named in the mark, and the record does not indicate whether the goods/services originate in that place, and misdescriptiveness would not be material to the decision to purchase the goods/services, the examining attorney must do the following:
- (1) If (a) the entire mark would be geographically misdescriptive, or a portion of the mark would be geographically descriptive (making disclaimer an option), (b) there are no other substantive refusals (making an examiner’s amendment an option), and (c) the application could be put into condition for publication by examiner’s amendment (see TMEP §707), to expedite prosecution, the examining attorney must:
- Attempt to contact the applicant to determine whether the goods/services originate in the place named and, if so, to obtain authorization for a disclaimer and for any other amendments that would put the application in condition for approval for publication.
- If the applicant states that the goods/services do not originate in the place named, the examining attorney must so indicate by entering a Note to the File in the record, enter any amendments necessary to put the application in condition for approval, and approve the mark for publication.
- (2) If the examining attorney is unable to reach the applicant or cannot obtain authorization for an examiner’s amendment, or if the applicant indicates that they do not know where the goods/services will originate, or if an Office action is otherwise necessary to make substantive refusals or requirements that cannot be satisfied by examiner’s amendment, the examining attorney must proceed as follows:
- Issue an information request under 37 C.F.R. §2.61(b), asking where the goods/services originate. This written request is made to ensure the completeness of the record. The examining attorney may also issue a refusal under §2(e)(2) as geographically descriptive (or a requirement for a disclaimer, if appropriate), based on the presumption that the goods/services come from the place named in the mark; and
- Issue any other relevant refusals and requirements.
See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008), (affirming alternative refusals of NORMANDIE CAMEMBERT for cheese under both §§2(e)(2) and 2(e)(3), as well as a refusal based on the applicant’s failure to comply with the examining attorney’s requirement for information as to the geographic origin of the goods under 37 C.F.R. §2.61(b) ). The Board stated that "our findings with respect to the substantive Section 2(e)(2) refusal include a presumption, unfavorable to applicant, that applicant’s goods in fact originate or will originate in or from the place named in the mark. Similarly with respect to the alternative Section 2(e)(3) refusal, we alternatively presume, unfavorably to applicant, that applicant’s goods do not or will not originate in or from the place named in the mark").
See TMEP §1210.05(d)(ii) regarding the procedures when it is unclear where the goods/services originate or will originate and any misdescriptiveness would be material to the decision to purchase.