TMEP 1210.05(d): Procedures for Issuing Geographically Deceptive Refusals

This is the October 2015 Edition of the TMEP

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1210.05(d)    Procedures for Issuing Geographically Deceptive Refusals

Although the test for determining whether a mark is primarily geographically deceptively misdescriptive under §2(e)(3) is now the same as the test for determining whether a mark is deceptive under §2(a), the statutory provisions with respect to registrability on the Supplemental Register and on the Principal Register under §2(f) are different:

  • Under §23(a) of the Trademark Act, a mark that is primarily geographically deceptively misdescriptive may be registered on the Supplemental Register if the mark has been in lawful use in commerce since before December 8, 1993 (the date of enactment of the NAFTA Implementation Act), while a mark that is deceptive may not be registered on the Supplemental Register; and
  • Under §2(f) of the Trademark Act, a mark that is primarily geographically deceptively misdescriptive may be registered if the mark became distinctive of the goods or services in commerce before December 8, 1993, while a mark that is deceptive may not be registered on the Principal Register even upon a showing of acquired distinctiveness.

Accordingly, because the statute expressly prohibits registration of deceptive marks on the Supplemental Register or on the Principal Register under §2(f), the examining attorney will proceed as follows.