1210.05(d)(ii) It is Not Clear Whether the Goods/Services Originate From the Place Named
If the applicant does not come from the place named in the mark, the record does not indicate whether the goods/services originate in that place (see TMEP §1210.03), and misdescriptiveness would be material to the decision to purchase, the examining attorney must do the following:
- (1) If (a) the entire mark would not be geographically descriptive (making disclaimer an option if the goods/services originate from the place), (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 should:
- 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, such that the mark is geographically deceptively misdescriptive, the examining attorney must so indicate by entering a Note to the File in the record. The examining attorney must then follow the appropriate procedure in TMEP §1210.05(d)(i).
- (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 uncertainty as to 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 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 alternative refusals, supported by evidence, under §§2(a) and 2(e)(3) as geographically deceptively misdescriptive, based on the alternative presumption that the goods do not come from the place named; and
- Issue any other relevant refusals and requirements; and
- 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 in the event of an appeal.
See In re Cheezwhse.com, Inc., 85 USPQ2d 1917 (TTAB 2008).
See TMEP §1210.03 regarding the procedures when it is unclear where the goods/services originate or will originate and any misdescriptiveness would not be material to the decision to purchase.