TMEP 1210.06(b): Marks That Include Primarily Geographically Deceptively Misdescriptive and Deceptive Terms Combined With Additional Matter

October 2017 Edition of the TMEP

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1210.06(b)    Marks That Include Primarily Geographically Deceptively Misdescriptive and Deceptive Terms Combined With Additional Matter

Geographically deceptive and primarily geographically deceptively misdescriptive matter need not comprise the entire mark, or even the dominant portion of the mark, to form the basis for a refusal under §2(a) or §2(e)(3). See 15 U.S.C. §1052(a), (e)(3). However, a §2(e)(3) refusal is not appropriate unless the evidence shows that the mark as a whole would likely be perceived as indicating the geographic origin of the goods or services. In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1748 (TTAB 2016). Likewise, a mark should not be refused under §2(a) unless the relevant geographic matter, when considered in the context of the mark as a whole, is deceptive. Id. ("Even under Trademark Act Section 2(a), which permits a narrower focus on the allegedly deceptive matter, a refusal to register may not be based on a term taken out of context when doing so would change its significance in the mark.").

If a composite mark includes matter that is primarily geographically deceptively misdescriptive within the meaning of §2(e)(3) or deceptive under §2(a), and the mark as a whole would be likely to be perceived as indicating the geographic origin of the goods or services, the examining attorney must follow the procedures outlined above for refusing registration. See TMEP §1210.05(d).

A composite mark that is deceptive under §2(a) cannot be registered, even with a disclaimer of the geographic component. In re Perry Mfg. Co., 12 USPQ2d 1751, 1751-52 (TTAB 1989). Similarly, a disclaimer of the geographic matter will not overcome a §2(e)(3) refusal, even if the mark was in use prior to December 8, 1993. In re Wada, 194 F.3d 1297, 52 USPQ2d 1539,1542 (Fed. Cir. 1999).

See TMEP §1210.05(a) regarding the basis for refusal of marks that are primarily geographically deceptively misdescriptive, and TMEP §1210.05(d) for procedures for issuing such refusals.

To help ensure that determinations concerning the primary significance of composite marks are handled consistently, examining attorneys must consult their senior or managing attorney before going forward when they have made a preliminary determination that the primary significance of the mark as a whole is not geographic. The senior or managing attorney will make the final determination or may seek guidance from the Office of Legal Policy regarding such marks.