TMEP 1210.05(b): Elements of a §2(e)(3) Refusal

This is the October 2015 Edition of the TMEP

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1210.05(b)    Elements of a §2(e)(3) Refusal

Accordingly, the elements of a refusal under Trademark Act §2(e)(3) are as follows:

  • (1) The primary significance of the mark is a generally known geographic location;
  • (2) The goods or services do not originate in the place identified in the mark;
  • (3) Purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark; and
  • (4) The misrepresentation would be a material factor in a significant portion of the relevant consumers’ decision to buy the goods or use the services.

See 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); Cal. Innovations, 329 F.3d at 1341; 66 USPQ2d at 1858.

The determination of whether the primary significance of the mark is a generally known geographic location can be made “by showing that the mark in question consists of or incorporates a term that denotes a geographical location which is neither obscure nor remote.” In re Sharky's Drygoods Co., 23 USPQ2d 1061, 1062 (TTAB 1992). See TMEP §1210.06 regarding procedures for examining geographic composite marks and TMEP §1210.06(b) regarding primarily geographically deceptively misdescriptive and deceptive composites. Thus, the focus is on whether the term in question is primarily geographic in the context of the mark, rather than on whether the geographic reference dominates the mark.

Often, the record is clear that neither the applicant nor the goods/services originate from the place named in the mark. In other cases, although the applicant may not come from the place named, it is not clear whether the goods/service originate in that place. In either situation, after determining that the primary significance of the mark is a generally known geographic location, and that there is a goods/place or services/place association such that the public is likely to believe that the goods or services originate in the place identified in the mark, the examining attorney must then determine whether a geographically deceptively misdescriptive refusal would be warranted. At this point, the assessment turns on materiality – that is, whether a known or possible misdescription in the mark would affect a substantial portion of the relevant consumers’ decision to purchase the goods/services.

In cases under the doctrine of foreign equivalents, where the place name in the mark appears in a foreign language, the requirement that a substantial portion of the relevant consuming public would likely be deceived raises special issues. To make a determination about “a substantial portion” in such cases, the examining attorney must consider whether the foreign language place name would be recognizable as such to consumers who do not speak the foreign language, and/or whether consumers who speak the foreign language could constitute a substantial portion of the relevant consumers (e.g., because they are the “target audience”). Spirits, 563 F.3d at 1353, 90 USPQ2d at 1493; see Corporacion Habanos, S.A. v. Guantanamera Cigars Co., 102 USPQ2d 1085, 1097 (TTAB 2012).