1210    Refusal on Basis of Geographic Significance

Section 2(e)(2) of the Trademark Act, 15 U.S.C. §1052(e)(2),  prohibits registration on the Principal Register of a mark that is primarily geographically descriptive of the goods or services named in the application. See TMEP §1210.01(a).

Section 2(e)(3) of the Trademark Act, 15 U.S.C. §1052(e)(3), prohibits registration of a mark that is primarily geographically deceptively misdescriptive of the goods or services named in the application. See TMEP §1210.01(b). Prior to the amendment of the Trademark Act on January 1, 1994, by the North American Free Trade Agreement (NAFTA) Implementation Act, Public Law 103-182, 107 Stat. 2057, the statutory basis for refusal to register primarily geographically deceptively misdescriptive marks was §2(e)(2).

Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a),  prohibits registration of a designation that consists of or comprises deceptive matter, as well as geographical indications which, when used on or in connection with wines or spirits, identify a place other than the origin of the goods. See TMEP §§1210.01(c) and 1210.08.

See TMEP §1210.05(c) regarding the distinction between marks that are primarily geographically deceptively misdescriptive under §2(e)(3) and marks that are deceptive under §2(a).

1210.01    Elements

1210.01(a)    Geographically Descriptive Marks – Test

To support a refusal to register a mark as primarily geographically descriptive under Section 2(e)(2) of the Trademark Act, 15 U.S.C §1052(e)(2), the examining attorney must show that:

• (1) the primary significance of the mark is a generally known geographic location (see TMEP §§1210.02–1210.02(b)(iv));
• (2) the goods or services originate in the place identified in the mark (see TMEP §1210.03); and
• (3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark (see TMEP §§1210.04–1210.04(d)). Note: If the mark is remote or obscure, the public is unlikely to make a goods/place or services/place association (see TMEP §1210.04(c)).

See Spiritline Cruises LLC v. Tour Mgmt. Servs., Inc., 2020 USPQ2d 48324, at *5 (TTAB 2020) (citing In re Nantucket, Inc., 677 F.2d 95, 96-97, 213 USPQ 889, 891 (C.C.P.A. 1982)); see also In re Newbridge Cutlery Co., 776 F.3d 854, 860-61, 113 USPQ2d 1445, 1448-49 (Fed. Cir. 2015); In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1452 (Fed. Cir. 1987); In re JT Tobacconists, 59 USPQ2d 1080, 1081 (TTAB 2001). Relevant purchasers are the purchasing public in the United States of the types of goods or services identified in the involved application. City of London Distillery, Ltd. v. Hayman Grp. Ltd., 2020 USPQ2d 11487, at *6 (TTAB 2020); In re Broken Arrow Beef & Provision, LLC, 129 USPQ2d 1431, 1432 (TTAB 2019) (citing In re Newbridge Cutlery Co., 776 F.3d at 861, 113 USPQ2d at 1449).

1210.01(b)    Geographically Deceptively Misdescriptive Marks – Test

To support a refusal to register a mark as primarily geographically deceptively misdescriptive under Section 2(e)(3) of the Trademark Act, 15 U.S.C §1052(e)(3), the examining attorney must show that:

• (1) the primary significance of the mark is a generally known geographic location (see TMEP §§1210.02–1210.02(b)(iv));
• (2) the goods or services do not originate in the place identified in the mark (see TMEP §1210.03);
• (3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark (see TMEP §§1210.04–1210.04(d)). Note: If the mark is remote or obscure, the public is unlikely to make a goods/place or services/place association (see TMEP §1210.04(c)); and
• (4) the misrepresentation is a material factor in a significant portion of the relevant consumer’s decision to buy the goods or use the services (see TMEP §§1210.05(c)–(c)(ii)).

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); In re Les Halles De Paris J.V., 334 F.3d 1371, 67 USPQ2d 1539 (Fed. Cir. 2003). See TMEP §1210.01(a) for more information regarding determining relevant purchasers.

Prior to the amendment of the Trademark Act by the NAFTA Implementation Act, it was not necessary to show that the misrepresentation was likely to be a material factor in the consumer’s decision to buy the goods or use the services to establish that a mark was primarily geographically deceptively misdescriptive. However, in In re California Innovations, Inc., the Court of Appeals for the Federal Circuit held that in view of the NAFTA amendments, a showing of public deception is required to establish that a mark is unregistrable under §2(e)(3) of the Trademark Act. 329 F.3d 1334, 1339, 66 USPQ2d 1853, 1856 (Fed. Cir. 2003).

See TMEP §1210.05(c) for further information regarding the distinction between marks comprising deceptive matter under §2(a) of the Act and marks comprising primarily geographically deceptively misdescriptive matter under §2(e)(3) of the Act, and TMEP §§1210.05(c)–c)(ii) regarding the showing that a misrepresentation of the origin of the goods or services is likely to affect the purchaser’s decision to buy the goods or use the services.

1210.01(c)    Geographically Deceptive Marks – Test

As noted in TMEP §1210.05(a), the test for determining whether a mark is primarily geographically deceptively misdescriptive under §2(e)(3) of the Trademark Act is the same as the test for determining whether a mark is deceptive under §2(a) of the Act. 15 U.S.C §§1052(a), (e)(3). To support a refusal of registration on the ground that a geographic term is deceptive under §2(a), the examining attorney must show that:

• (1) the primary significance of the mark is a generally known geographic location (see TMEP §§1210.02–1210.02(b)(iv));
• (2) the goods or services do not originate in the place named in the mark (see TMEP §1210.03);
• (3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark (see TMEP §§1210.04–1210.04(d)). Note: If the mark is remote or obscure, the public is unlikely to make a goods/place or services/place association (see TMEP §1210.04(c)); and
• (4) the misrepresentation is a material factor in a significant portion of the relevant consumer’s decision to buy the goods or use the services (see TMEP §§1210.05(c)–(c)(ii)).

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); Institut Nat’l des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 1580, 22 USPQ2d 1190, 1195 (Fed. Cir. 1992); In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841, 1843 (TTAB 2012); In re House of Windsor, Inc., 221 USPQ 53 (TTAB 1983) ; see also In re Cal. Innovations Inc., 329 F.3d 1334, 66 USPQ2d 1853 (Fed. Cir. 2003). See TMEP §1210.01(a) for more information regarding determining relevant purchasers.

See TMEP §1210.05(a) for more information regarding the distinction between marks comprising deceptive matter under §2(a) and marks comprising primarily geographically deceptively misdescriptive matter under §2(e)(3), and TMEP §§1210.05(c)–(c)(ii) regarding the showing that a misrepresentation of the origin of the goods or services is likely to affect the purchaser’s decision to buy the goods or use the services.

1210.02    Primarily Geographic Significance

The significance of a mark is primarily geographic if it identifies a real and significant geographic location and the primary meaning of the mark is the geographic meaning.

1210.02(a)    Geographic Locations

A geographic location may be any term identifying a country, city, state, continent, locality, region, area, or street.

Region. A particular, identifiable region (e.g., "Midwest" or "Mid-Atlantic") is a geographic location. In re Pan-O-Gold Baking Co., 20 USPQ2d 1761 (TTAB 1991) (holding that the primary significance of "New England" is geographic). On the other hand, vague geographic terms (e.g. , "Global," "National," "International," or "World") are not considered to be primarily geographic, though they may be merely descriptive or deceptively misdescriptive under §2(e)(1) of the Trademark Act. See TMEP §1209.03(o).

Nicknames. A geographic nickname (e.g., "Big Apple" or "Motown"), or an abbreviation or other variant of the name of a geographic location, is treated the same as the actual name of the geographic location, if it is likely to be perceived as such by the purchasing public. See In re Spirits of New Merced, LLC, 85 USPQ2d 1614 (TTAB 2007) (finding "Yosemite" – a well recognized and frequently used shorthand reference to Yosemite National Park and the Yosemite region in general – conveys a readily recognizable geographic significance); In re Carolina Apparel,48 USPQ2d 1542 (TTAB 1998) (holding CAROLINA APPAREL primarily geographically descriptive of retail clothing store services, where the evidence showed that "Carolina" is used to indicate either the state of North Carolina or South Carolina). But see In re Broken Arrow Beef & Provision, LLC, 129 USPQ2d 1431 (TTAB 2019) (finding "the letters ‘BA’ in the applied-for mark have no obvious, generally known geographic significance, much less as a known abbreviation for Broken Arrow, Oklahoma" and thus did not identify a place known generally to the purchasing public); In re Trans Cont'l Records, Inc., 62 USPQ2d 1541 (TTAB 2002) (finding O-TOWN "relatively obscure term" that would not be perceived by a significant portion of the purchasing public as a geographic reference to Orlando, Florida).

Adjectives. The adjectival form of the name of a geographic location is considered primarily geographic if it is likely to be perceived as such by the purchasing public. See In re Joint-Stock Co. "Baik," 80 USPQ2d 1305 (TTAB 2006) (holding BAIKALSKAYA – the Russian equivalent of "from Baikal" or "Baikal’s" – primarily geographically descriptive of vodka); In re Jack’s Hi-Grade Foods, Inc., 226 USPQ 1028 (TTAB 1985) (holding NEAPOLITAN primarily geographically deceptively misdescriptive of sausage emanating from the United States, where the term is defined as "of or pertaining to Naples in Italy"); In re BankAmerica Corp., 231 USPQ 873 (TTAB 1986) (holding BANK OF AMERICA primarily geographically descriptive).

Maps. A map or outline of a geographic area is also treated the same as the actual name of the geographic location if it is likely to be perceived as such. See In re Can. Dry Ginger Ale, Inc., 86 F.2d 830, 32 USPQ 49 (C.C.P.A. 1936) (finding a map of Canada to be the equivalent of the word "Canada"). But see In re Texsun Tire & Battery Stores, Inc., 229 USPQ 227, 229 (TTAB 1986) (holding that if the depiction of a map is fanciful or so integrated with other elements of a mark that it forms a unitary whole, then the map should not be considered primarily geographically descriptive).

Coined Locations. The mere fact that a term may be the name of a place that has a physical location does not necessarily make that term geographic under §2(e)(2) of the Act. For example, names of amusement parks, residential communities, and business complexes which are coined by the applicant, must not be refused. In re Pebble Beach Co., 19 USPQ2d 1687, 1688-89 (TTAB 1991) (finding 17 MILE DRIVE not a geographic term, where it refers to a specific location wholly owned by applicant, and was coined by applicant to refer both to applicant’s services and the place where the services were performed).

1210.02(b)    Primary Significance

To support a refusal to register geographic matter, the Trademark Act requires that the mark be primarily geographic, that is, that its primary significance to the relevant consumers in the United States be that of a geographic location. 15 U.S.C. §§1052(e)(2)   and (3). See, e.g., In re Newbridge Cutlery Co., 776 F.3d 854, 113 USPQ2d 1445 (Fed. Cir. 2015) (finding evidence insufficient to establish that Newbridge, Ireland is a place known generally to the relevant American public); In re Wada, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999) (NEW YORK held to have primarily geographic significance; Court was not persuaded by assertions that the composite NEW YORK WAYS GALLERY evokes a gallery that features New York "ways" or "styles"); In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987) (evidence insufficient to establish that public in United States would perceive VITTEL as the name of a place where cosmetic products originate; Vittel, France found to be obscure); In re Broken Arrow Beef and Provision, LLC, 129 USPQ2d 1431, 1444 (TTAB 2019) (finding the record failed to establish that "’BA’ in the applied-for mark is anything other than ‘a relatively obscure term which would not be perceived as a geographic reference to’ Broken Arrow, Oklahoma by beef consumers outside Broken Arrow"); In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738(TTAB 2016) (reversing a §2(e)(3) refusal of a mark containing the wording MT. RAINIER THE MOUNTAIN OF SEATTLE ESPRESSO & MILK, noting that "[w]hile there is no doubt that the term SEATTLE identifies a generally known geographic location, as it is used in the context of Applicant’s mark, we do not find that the relevant public would consider it to indicate of the origin of the goods"); In re Cheezwhse.com, Inc., 85 USPQ2d 1917 (TTAB 2008) (NORMANDIE CAMEMBERT, with CAMEMBERT disclaimed, held primarily geographically descriptive of cheese because NORMANDIE is the French spelling for Normandy, consumers would recognize NORMANDIE as the equivalent of Normandy, the primary significance of Normandy is a known geographic place in France, and CAMEMBERT is generic for applicant’s goods; Board was not persuaded that the primary significance of NORMANDIE was the ocean liner SS Normandie); In re Cotter & Co., 228 USPQ 202 (TTAB 1985) (the primary significance of WESTPOINT is as the name of the United States Military Academy rather than the town in New York).

When the primary significance of a geographic designation identifying a city is that of a geographic location, the designation may include locations in the metropolitan area of the identified city.

When it is not clear on its face that the primary significance of the mark is that of a geographic location, the record must include substantial evidence to support a conclusion that the mark identifies a place "known generally to the relevant American public." See In re Newbridge Cutlery, 776 F.3d at 862, 113 USPQ2d at 1450. A showing " . . . that the population of the location is sizable and/or that members of the consuming public have ties to the location (to use the example in Loew’s: that Durango, Mexico, would be recognized by "the Mexican population of this country") is evidence that a location is generally known." Id. at 861, 113 USPQ2d at 1449. A gazetteer entry alone, or a description of the place on the internet, does not necessarily evidence that a place is generally known to the relevant American consuming public. Id. at 863, 113 USPQ2d at 1450. Such evidence must, therefore, be supported by evidence showing the extent to which relevant American consumers would be familiar with the location. Id. at 862, 113 USPQ2d at 1450.

The fact that the proposed mark has meaning or usage other than as a geographic term does not necessarily alter its primarily geographic significance. See TMEP §1210.02(b)(i).

When a geographic term is combined with additional matter (e.g., wording and/or a design element), the examining attorney must determine the primary significance of the composite. See TMEP §§1210.02(c)–1210.02(c)(iii).

See TMEP §1210.04(c) regarding obscure or remote geographic marks.

1210.02(b)(i)    Other Meanings

The fact that the mark has meaning or usage other than as a geographic term does not necessarily alter its primarily geographic significance. Thus, if a geographic term has another meaning, the examining attorney must determine whether the primary significance is geographic. If so, registration must be refused under §2(e)(2), §2(e)(3), or §2(a). See, e.g., In re Hollywood Lawyers Online,110 USPQ2d 1852, 1858 (TTAB 2014) (finding no allusion to the alternative meaning of "Hollywood" referencing the film industry when viewed in the context of applicant’s services and without additional elements in the mark to detract from the geographic significance); In re Opryland USA Inc., 1 USPQ2d 1409 (TTAB 1986) (holding THE NASHVILLE NETWORK primarily geographically descriptive of television program production and distribution services, as the Board found the primary significance of the term was Nashville, Tennessee and not that of a style of music); In re Cookie Kitchen, Inc., 228 USPQ 873, 874 (TTAB 1986) (finding the fact that MANHATTAN identifies an alcoholic cocktail does not alter the primary significance of the term as a borough of New York City); In re Jack’s Hi- Grade Foods, Inc., 226 USPQ 1028, 1029 (TTAB 1985) (finding that NEAPOLITAN identifies, among other things, a type of ice cream, does not alter the primary significance of that term as meaning "of or pertaining to Naples in Italy").

However, if the most prominent meaning or significance of the mark is not geographic, or if the mark creates a separate readily understood meaning that is not geographic, registration must not be refused under §2(e)(2), §2(e)(3), or §2(a). See In re Newbridge Cutlery Co., 776 F.3d 854, 113 USPQ2d 1445 (Fed. Cir. 2015) (finding it less likely that Newbridge (a town in Ireland) is generally known as the name of a place given its other meanings); In re Sibony, 2021 USPQ2d 1036, at *13 (TTAB 2021) (reversing a §2(e)(3) refusal because, "[w]hile REPUBLIC OF LONDON includes the geographic term ‘London,’ the primary significance of the mark as a whole is a fictitious place"); In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1748(TTAB 2016) (reversing a §2(e)(3) refusal of a composite mark containing the wording MT. RAINIER THE MOUNTAIN OF SEATTLE ESPRESSO & MILK, noting that "[w]hile there is no doubt that the term SEATTLE identifies a generally known geographic location, as it is used in the context of [a]pplicant’s mark, we do not find that the relevant public would consider it to indicate of the origin of the goods"); In re Int'l Taste Inc., 53 USPQ2d 1604, 1605–06 (TTAB 2000) (finding doubt as to the primary significance of HOLLYWOOD because of other prominent, significant meaning of HOLLYWOOD as referring to the entertainment industry in general, with the doubt resolved in favor of the applicant); In re Urbano, 51 USPQ2d 1776, 1780 (TTAB 1999) (finding the primary significance of SYDNEY 2000, used for advertising, business, and communication services, is as a reference to the Olympic Games, not to the name of a place); In re Jim Crockett Promotions Inc., 5 USPQ2d 1455, 1456 (TTAB 1987) (finding that the primary significance of THE GREAT AMERICAN BASH for promoting, producing, and presenting professional wrestling matches, is to suggest something of desirable quality or excellence rather than to describe the geographic origin of the services); In re Dixie Ins. Co., 223 USPQ 514, 516 (TTAB 1984) (DIXIE held not primarily geographically descriptive of property and casualty underwriting services, where the examining attorney provided no evidence to show that the geographical significance of DIXIE was its primary significance).

1210.02(b)(i)(A)    Surname Significance

A term’s geographic significance may not be its primary significance if the term also has surname significance. See In re Hamilton Pharm. Ltd., 27 USPQ2d 1939, 1943 (TTAB 1993) (HAMILTON held primarily merely a surname, even though the term had some geographical connotations); In re Colt Indus. Operating Corp., 195 USPQ 75 (TTAB 1977) (FAIRBANKS held not primarily merely a surname because the geographical significance of the mark was determined to be just as dominant as its surname significance).

1210.02(b)(ii)    More Than One Geographic Location With Same Name

The fact that the mark identifies more than one geographic location does not necessarily detract from the term’s primary geographic significance. See, e.g., In re Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985) (DURANGO held primarily geographically deceptively misdescriptive of chewing tobacco not grown in Durango, Mexico, where the evidence of record showed that tobacco is a crop produced and marketed in that area, even though there is more than one place named Durango); In re Cambridge Digital Sys., 1 USPQ2d 1659, 1662 (TTAB 1986) (CAMBRIDGE DIGITAL and design held primarily geographically descriptive of computer systems and parts thereof, where applicant’s place of business is Cambridge, Massachusetts, even though there is more than one Cambridge).

1210.02(b)(iii)    Non-Geographic Characteristics of Goods or Services

Geographic matter may serve to designate a kind or type of goods or services, or to indicate a style or design that is a feature of the goods or services, rather than to indicate their geographic origin. For example, the geographic components in terms such as "dotted swiss," "Boston baked beans," "Early American design," and "Italian spaghetti" are not understood as indicating the geographic origin of the goods but, rather, a particular type or style of product (regardless of where the product is produced). See Forschner Grp. Inc. v. Arrow Trading Co. Inc., 30 F.3d 348, 356, 31 USPQ2d 1614, 1619 (2d Cir. 1994), aff’d, 124 F.3d 402, 43 USPQ2d 1942 (2d Cir. 1997) (finding that SWISS ARMY KNIFE refers to a knife used by the Swiss Army, not an Army Knife from Switzerland); Institut Nat’l des Appellations D’Origine v. Vintners Int’l Co., Inc., 958 F.2d 1574, 1580, 22 USPQ2d 1190, 1195 (Fed. Cir. 1992) (finding evidence showing that Chablis is the name of a region in France insufficient to establish that CHABLIS WITH A TWIST is geographically deceptive of wine under §2(a), where evidence showed that the term "Chablis" would be perceived by consumers in the United States as the generic name for a type of wine with the general characteristics of French chablis); Hyde Park Clothes, Inc. v. Hyde Park Fashions, Inc., 93 USPQ 250 (S.D.N.Y. 1951) , aff’d, 204 F.2d 223, 97 USPQ 246 (2d Cir. 1953), cert. denied, 346 U.S. 827, 99 USPQ 491 (1953) (primary significance of HYDE PARK for men’s suits is to suggest that the product is stylish or of high quality rather than to provide information about geographic origin). See TMEP §1209.03(y) regarding the procedures for examining applications for cheeses and processed meats in which the mark includes geographic wording that does not indicate geographic origin, but otherwise may be a generic designation for such goods.

When geographic terms are used in circumstances in which it is clear that they are meant to convey some meaning other than geographic origin, registration must not be refused on the basis of geographical descriptiveness or misdescriptiveness. However, there may be some other basis for refusal; for example, the terms may be merely descriptive or deceptively misdescriptive of the goods or services under §2(e)(1) of the Act, 15 U.S.C.  §1052(e)(1). In re MBNA Am. Bank, N.A., 340 F.3d 1328, 67 USPQ2d 1778 (Fed. Cir. 2003), reh’g denied 2004 U.S. App. LEXIS 2187 (Fed. Cir. Jan. 12, 2004) (MONTANA SERIES and PHILADELPHIA SERIES are merely descriptive of "credit card services featuring credit cards depicting scenes or subject matter of, or relating to" the places named in the marks); In re Cox Enters. Inc., 82 USPQ2d 1040 (TTAB 2007) (applicant’s mark, THEATL, is simply a compressed version of the term "THE ATL," which is a nickname for the city of Atlanta, and is merely descriptive of the subject matter of applicant’s publications); In re Busch Entm't Corp., 60 USPQ2d 1130 (TTAB 2000) (EGYPT merely descriptive of subject matter or motif of amusement park services). See TMEP §§1209–1209.04 regarding marks that are merely descriptive or deceptively misdescriptive under §2(e)(1).

In rare circumstances, it may be unclear whether the primary significance of the term is geographic or merely descriptive or deceptively misdescriptive. In such cases, the examining attorney may refuse registration on both grounds, in the alternative.

1210.02(b)(iv)    "America" or "American" and Similar Terms in Marks

When terms such as "AMERICA," "AMERICAN," and "USA" appear in marks, determining whether the term or the entire mark should be considered geographic can be particularly difficult. There is no simple or mechanical answer to the question of how to treat "AMERICA" or "AMERICAN" in a mark. The examining attorney must evaluate each mark on a case-by-case basis. The examining attorney must consider the entire context, the type of goods or services at issue, the geographic origin of the goods or services and, most importantly, the overall commercial impression engendered by the mark at issue. The following principles, developed in the case law, should provide guidance in reaching a judgment in a given case.

• (1) If "AMERICA" or "AMERICAN" is used in a way that primarily denotes the United States origin of the goods or services, then the term is primarily geographically descriptive. See, e.g., Am. Diabetes Ass’n, Inc. v. Nat'l Diabetes Ass’n, 533 F. Supp. 16, 214 USPQ 231 (E.D. Pa. 1981), aff’d, 681 F.2d 804 (3d Cir. 1982) (AMERICAN DIABETES ASSOCIATION held primarily geographically descriptive); In re Monograms Am., Inc., 51 USPQ2d 1317 (TTAB 1999) (MONOGRAMS AMERICA primarily geographically descriptive of consultation services for owners of monogramming shops); In re BankAmerica Corp., 231 USPQ 873 (TTAB 1986) (BANK OF AMERICA held primarily geographically descriptive); Am. Paper & Plastic Products, Inc. v. Am. Automatic Vending Corp., 152 USPQ 117 (TTAB 1966) (AMERICAN AUTOMATIC VENDING held primarily geographically descriptive).

  One commentator refers to such marks as exhibiting an "unadorned" use of "AMERICA" or "AMERICAN." J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §14:11 (4th ed. 2006). Many service marks (e.g., association-type marks) fall squarely into this category. See, e.g., In re U.S. Cargo, Inc., 49 USPQ2d 1702 (TTAB 1998) (U.S. CARGO primarily geographically descriptive of towable trailers carrying cargo and vehicles).

• (2) If a composite mark does not primarily convey geographic significance overall, or if "AMERICA" or "AMERICAN" is used in a nebulous or suggestive manner, then it is inappropriate to treat "AMERICA" or "AMERICAN" as primarily geographically descriptive. See, e.g., Hamilton-Brown Shoe Co. v. Wolf Bros. & Co., 240 U.S. 251 (1916) (THE AMERICAN GIRL held not primarily geographically descriptive for shoes); Am. Plan Corp. v. State Loan & Fin. Corp., 365 F.2d 635, 150 USPQ 767 (3d Cir. 1966), cert. denied, 385 U.S. 1011, 152 USPQ 844 (1967) (AMERICAN PLAN CORPORATION held not primarily geographically descriptive for insurance brokerage services); Wilco Co. v. Automatic Radio Mfg. Co., Inc., 255 F. Supp. 625, 151 USPQ 24 (D. Mass. 1966) (ALL AMERICAN held not primarily geographically descriptive); In re Jim Crockett Promotions Inc., 5 USPQ2d 1455 (TTAB 1987) (THE GREAT AMERICAN BASH held not primarily geographically descriptive of wrestling exhibitions).

  The introduction of a nuance, even a subtle one, may remove a mark from the primarily geographically descriptive category. This area calls for the most difficult analysis. The examining attorney must determine whether the overall commercial impression is something other than primarily geographic – for example, due to double meanings or shades of suggestive meanings.

• (3) If "AMERICA" or "AMERICAN" is used in virtually any manner with goods or services that are not from the United States, then the examining attorney should determine whether the term is primarily geographically deceptively misdescriptive under §2(e)(3) and/or deceptive under §2(a). See, e.g., Singer Mfg. Co. v. Birginal-Bigsby Corp., 319 F.2d 273, 138 USPQ 63 (C.C.P.A. 1963) (AMERICAN BEAUTY held primarily geographically deceptively misdescriptive when used on Japanese-made sewing machines); In re Biesseci S.p.A., 12 USPQ2d 1149 (TTAB 1989) (AMERICAN SYSTEM and design, with a disclaimer of AMERICAN, held deceptive for clothing manufactured in Italy). Cf. In re Salem China Co., 157 USPQ 600 (TTAB 1968) (AMERICAN LIMOGES held deceptive under §2(a) when used on china not made in Limoges, France). In this situation, even marks that arguably convey a non-geographic commercial impression must be viewed with great skepticism.
• (4) If "AMERICA" or "AMERICAN" appears in a phrase or slogan, the examining attorney must evaluate the entire mark to determine whether it is merely descriptive as laudatory, or even incapable. In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (THE BEST BEER IN AMERICA so highly laudatory and descriptive as applied to beer and ale that it is incapable of acquiring distinctiveness); In re Carvel Corp., 223 USPQ 65 (TTAB 1984) (AMERICA’S FRESHEST ICE CREAM held incapable); In re Wileswood, Inc., 201 USPQ 400 (TTAB 1978) (AMERICA’S BEST POPCORN! and AMERICA’S FAVORITE POPCORN! held merely descriptive of unpopped popcorn); Kotzin v. Levi Strauss & Co., 111 USPQ 161 (Comm’r Pats. 1956) (AMERICA’S FINEST JEANS and AMERICA’S FINEST for overalls held not confusingly similar and incapable by inference).

  Typically these marks primarily extol the quality or popularity of the goods or services and secondarily denote geographic origin. See TMEP §1209.03(n) regarding use of terms such as "AMERICA" and "AMERICAN" in a way that is merely descriptive or generic.

1210.02(c)    Geographic Terms Combined With Additional Matter

A geographic composite mark is one composed of geographic matter coupled with additional matter (e.g., wording and/or a design element). When examining such a mark, the examining attorney must determine the primary significance of the composite. See In re Save Venice New York Inc., 259 F.3d 1346, 59 USPQ2d 1778 (Fed. Cir. 2001) (THE VENICE COLLECTION and SAVE VENICE INC. with an image of the winged Lion of St. Mark, for various goods, held primarily geographically deceptively misdescriptive of products that do not originate in Venice, Italy); In re Wada, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999) (NEW YORK WAYS GALLERY, with a disclaimer of NEW YORK, held primarily geographically deceptively misdescriptive of backpacks, handbags, purses, and similar items); In re Bacardi & Co. Ltd., 48 USPQ2d 1031 (TTAB 1997) (HAVANA SELECT, HABANA CLASICO, OLD HAVANA, HAVANA PRIMO, and HAVANA CLIPPER primarily geographically deceptively misdescriptive of rum); In re Perry Mfg. Co., 12 USPQ2d 1751 (TTAB 1989) (PERRY NEW YORK and design, with a disclaimer of NEW YORK, held deceptive for various items of clothing that originate in North Carolina, and have no connection with New York, because of the renown of New York in the apparel industry); In re Biesseci S.p.A., 12 USPQ2d 1149 (TTAB 1989) (AMERICAN SYSTEM and design of running man, for clothing manufactured in Italy, held deceptive).

See TMEP §§1210.06–1210.06(b) regarding the procedure for examining geographic composites.

1210.02(c)(i)    Two Geographic Terms Combined

When two geographic terms are combined in the same mark, the primary significance of the composite may still be geographic, if purchasers would believe that the goods or services originate from or are rendered in both of the locations named in the mark. See In re Narada Prods., Inc., 57 USPQ2d 1801, 1803 (TTAB 2001) (holding CUBA L.A. primarily geographically deceptively misdescriptive of musical recordings and live musical performances that did not originate in Cuba or Los Angeles, the Board finding that purchasers would understand the composite as a reference to the two places named rather than to "some mythical place called ‘Cuba L.A.’"); In re London & Edinburgh Ins. Grp. Ltd., 36 USPQ2d 1367 (TTAB 1995) (holding LONDON & EDINBURGH INSURANCE primarily geographically descriptive of insurance and underwriting services that are rendered or originate in the cities of London and Edinburgh).

Repeating a geographical term does not alter the geographical significance of that term. In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694 (TTAB 1992) (holding LONDON LONDON deceptive for clothing having no connection with London, given the renown of London as a center for contemporary as well as traditional fashions).

1210.02(c)(ii)    Geographic Terms Combined With Descriptive or Generic Matter

Generally, the addition of a highly descriptive or generic term to the name of a geographic place does not alter its primarily geographic significance. Spiritline Cruises LLC v. Tour Mgmt. Servs., Inc., 2020 USPQ2d 48324 (TTAB 2020) (holding CHARLESTON HARBOR TOURS primarily geographically descriptive of various travel tour and cruise services because TOURS is generic for the services and CHARLESTON HARBOR is a well known harbor in Charleston, South Carolina); In re Cheezwhse.com, Inc., 85 USPQ2d 1917 (TTAB 2008) (holding NORMANDIE CAMEMBERT with CAMEMBERT, disclaimed, primarily geographically descriptive of cheese because Normandy, France was famous for cheese and the Board presumed that the goods would originate there since applicant failed to submit information about the origin of the goods); In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001) (holding MINNESOTA CIGAR COMPANY primarily geographically descriptive of cigars); In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998) (holding CAROLINA APPAREL primarily geographically descriptive of retail clothing store services); In re Chalk’s Int’l Airlines Inc., 21 USPQ2d 1637 (TTAB 1991) (holding PARADISE ISLAND AIRLINES 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 Wine Soc’y of Am. Inc., 12 USPQ2d 1139 (TTAB 1989) (holding THE WINE SOCIETY OF AMERICA primarily geographically descriptive of wine club membership services); In re Cal. Pizza Kitchen Inc., 10 USPQ2d 1704 (TTAB 1988) (holding CALIFORNIA PIZZA KITCHEN, with a disclaimer of PIZZA KITCHEN, primarily geographically descriptive of restaurant services).

1210.02(c)(iii)    Arbitrary, Fanciful, or Suggestive Composites

If, when viewed as a whole, a composite mark would not be likely to be perceived as identifying the geographic origin of the goods or services (i.e., the mark as a whole is not primarily geographically descriptive, primarily geographically deceptively misdescriptive, or deceptive), then the mark is regarded as arbitrary, fanciful, or suggestive. See In re Sibony, 2021 USPQ2d 1036, at *11-13 (TTAB 2021) (holding REPUBLIC OF LONDON for clothing items not primarily geographically deceptively misdescriptive under §2(e)(3) because the primary significance of the mark as a whole was a fictitious or whimsical location); In re Sharky’s Drygoods Co., 23 USPQ2d 1061 (TTAB 1992) (holding PARIS BEACH CLUB for T-shirts and sweatshirts not deceptive under §2(a) because Paris "is not located on an ocean or lake, and does not have a beach," thus, "[t]he juxtaposition of Paris with Beach Club results in an incongruous phrase;" and the inclusion of "Paris" in the mark was humorous or facetious because Paris is known for haute couture and purchasers would not expect T-shirts and sweatshirts to originate there).

1210.03    Geographic Origin of the Goods or Services

The question of whether a term is primarily geographically descriptive under §2(e)(2) of the Trademark Act, primarily geographically deceptively misdescriptive under §2(e)(3) of the Act, or geographically deceptive under §2(a) of the Act 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, 1694-95 (TTAB 1996) (holding RODEO DRIVE primarily geographically deceptively misdescriptive of perfume, where opposer’s evidence showed that a significant number of Rodeo Drive retailers sold "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, 391-92, 13 USPQ2d 1725, 1727 (Fed. Cir. 1990) (holding RODEO DRIVE 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 City of London Distillery Ltd. v. Hayman Grp. Ltd., 2020 USPQ2d 11487, at *6, *10 (TTAB 2020) (holding CITY OF LONDON primarily geographically descriptive of gin distilled at a distillery in London and bottled just outside of London); In re Joint-Stock Co. "Baik," 80 USPQ2d 1305, 1310 (TTAB 2006) (holding BAIKALSKAYA, the Russian equivalent of "from Baikal" or "Baikal’s," 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 was 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 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) (holding THE MONTECITO DIET 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, because the Board found 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) (holding HARVEYS BRISTOL CREAM not primarily geographically descriptive of cakes flavored with sherry wine, because the Board found that neither applicant’s sherry wines nor applicant’s cakes came 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) (holding NANTUCKET NECTARS 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) (holding PARADISE ISLAND AIRLINES 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) (holding NIPPON not deceptive of, inter alia, radios and televisions because, although the applicant was an American corporation, the goods were 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). In re Cal. Pizza Kitchen Inc., 10 USPQ2d 1704, 1706 n.2 (TTAB 1988) (holding CALIFORNIA PIZZA KITCHEN for restaurant services 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.

1210.04    Goods/Place or Services/Place Association

Refusal of registration under §2(e)(2), §2(e)(3), or §2(a) requires that there be 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.

To show that there is a goods/place or services/place association, the examining attorney may provide such evidence as excerpts from telephone directories, gazetteers, encyclopedias, geographic dictionaries, the LexisNexis® database, or the results of an Internet search.

The examining attorney should also examine the specimen(s) and any other evidence in the record that shows the context in which the applicant’s mark is used. See In re Broyhill Furniture Indus., Inc., 60 USPQ2d 1511, 1517 (TTAB 2001) (finding that applicant’s point of purchase display catalogs "foster a goods/place association between its furniture and Tuscany by referring to ‘Europe’s Mediterranean coast’ and ‘European sensibility’"); and In re Nantucket Allserve Inc., 28 USPQ2d 1144, 1146 (TTAB 1993) (finding that applicant’s product labels bore a picture of Nantucket, stated that the goods were "born" or "created" on Nantucket and "[embody] the wholesome quality of the Island whose name they bear," and mentioned no other geographic location). Note, however, that evidence other than the mark found on a specimen, which provides further information as to source, does not negate the geographic deceptive misdescriptiveness that may be conveyed by the mark itself. In re Premiere Distillery, LLC, 103 USPQ2d 1483, 1486-87 (TTAB 2012) ; In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841, 1848-49 (TTAB 2012) (finding the statements "brand," "Cuban Style Rum," and "Product of the USA" on applicant’s label do not negate the primary geographically deceptive misdescriptiveness of the OLD HAVANA mark).

When the geographic significance of a term is its primary significance and the geographic place is neither obscure nor remote, for purposes of §2(e)(2), the goods/place or services/place association may ordinarily be presumed from the fact that the applicant’s goods or services originate (see TMEP §1210.03) in or near the place named in the mark. In re Spirits of New Merced, LLC, 85 USPQ2d 1614, 1621 (TTAB 2007) (YOSEMITE BEER held geographically descriptive of beer produced and sold in a brewpub in Merced, California, the Board stating that "[s]ince the goods originate at or near [Yosemite National Park], we can presume an association of applicant’s beer with the park."); 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 made from water piped from Lake Baikal, the Board presuming a goods/place association "because applicant is located near Lake Baikal, in the city of Irkutsk."); In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001) (MINNESOTA CIGAR COMPANY held primarily geographically descriptive of cigars); In re U.S. Cargo, Inc., 49 USPQ2d 1702 (TTAB 1998) (U.S. CARGO primarily geographically descriptive of towable trailers carrying cargo and vehicles); In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998) (CAROLINA APPAREL primarily geographically descriptive of retail clothing store services); 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 Cal. Pizza Kitchen Inc., 10 USPQ2d 1704 (TTAB 1988) (CALIFORNIA PIZZA KITCHEN held primarily geographically descriptive of restaurant services that originate in California); In re Handler Fenton Westerns, Inc., 214 USPQ 848 (TTAB 1982) (DENVER WESTERNS held primarily geographically descriptive of western-style shirts originating in Denver).

This presumption is rebuttable. See TMEP §1210.04(c) regarding obscure or remote places, and TMEP §§1210.02–1210.02(c)(iii) regarding the primary significance of a geographic term.

It is more difficult to establish a services/place association than a goods/place association when making a refusal under §§2(e)(3) and 2(a). In re Les Halles De Paris J.V., 334 F.3d 1371, 1374, 67 USPQ2d 1539, 1542 (Fed. Cir. 2003). See TMEP §1210.04(a) regarding establishment of a goods/place association, and TMEP §1210.04(b) regarding establishment of a services/place association.

1210.04(a)    Establishing Goods/Place Association

To establish a goods/place association, it is not necessary to show that the place identified in the mark is well known or noted for the goods. In re Les Halles De Paris J.V., 334 F.3d 1371, 1374, 67 USPQ2d 1539, 1541 (Fed. Cir. 2003) ("[T]he goods-place association often requires little more than a showing that the consumer identifies the place as a known source of the product."). See In re Miracle Tuesday, LLC, 695 F.3d 1339, 1344, 104 USPQ2d 1330, 1333 (Fed. Cir. 2012) (JPK PARIS 75 and design held primarily geographically deceptively misdescriptive of fashion accessories that do not originate in Paris where it is undisputed that Paris is famous for such products); In re Save Venice New York Inc., 259 F.3d 1346, 59 USPQ2d 1778 (Fed. Cir. 2001) (THE VENICE COLLECTION and SAVE VENICE INC. composite marks featuring an image of the winged Lion of St. Mark held primarily geographically deceptively misdescriptive of products that do not originate in Venice, Italy, where an encyclopedia and a gazetteer showed that Venice was a large metropolitan area where fine art objects, glassware, and decorative items had been made and sold for centuries, and a popular tourist destination); In re Wada, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999) (NEW YORK WAYS GALLERY held primarily geographically deceptively misdescriptive where manufacturing listings and Nexis® excerpts showed that handbags and luggage are designed and manufactured in New York); In re Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985) (finding evidence from a gazeteer and dictionary showing that tobacco is a crop produced and marketed in Durango, Mexico sufficient to establish a prima facie goods/place association); In re Joint-Stock Co. "Baik," 80 USPQ2d 1305 (TTAB 2006) (BAIKALSKAYA held primarily geographically descriptive of vodka where record the showed that applicant is located in Irkutsk, Russia, a city near Lake Baikal and one of the main export regions of Russian vodka, applicant’s vodka is made from water piped directly from Lake Baikal, Lake Baikal is the world’s largest fresh water lake, and there are numerous references to "Baikal" in publications from various cities throughout the United States and in national publications); In re Broyhill Furniture Indus., Inc., 60 USPQ2d 1511, 1516-17 (TTAB 2001) (finding evidence that Tuscany, Italy is an important industrial center that produces a variety of products including furniture, and that several businesses advertise the sale of furniture from Tuscany on the Internet, was sufficient to establish a goods/place association between Tuscany and furniture, even though Tuscany is not famous for its furniture); In re Boyd Gaming Corp., 57 USPQ2d 1944 (TTAB 2000) (HAVANA RESORT & CASINO and ROYAL HAVANA RESORT & CASINO held primarily geographically deceptively misdescriptive of wearing apparel, beauty products and perfume that do not come from Havana, Cuba, where the record showed that Havana produces a variety of goods, including clothing and cosmetic items); In re Bacardi & Co. Ltd., 48 USPQ2d 1031 (TTAB 1997) (HAVANA SELECT, HABANA CLASICO, OLD HAVANA, HAVANA PRIMO, and HAVANA CLIPPER all held primarily geographically deceptively misdescriptive of rum that does not originate in Havana, Cuba, where the evidence showed that Havana is a major city and rum is a significant product).

In Save Venice, the court noted that in the modern marketing context, geographic regions that are noted for certain products or services are likely to expand from their traditional goods or services into related goods or services, and that this would be expected by consumers. Accordingly, the court held that "the registrability of a geographic mark may be measured against the public’s association of that region with both its traditional goods and any related goods or services that the public is likely to believe originate there." 259 F.3d at 1355, 59 USPQ2d at 1784.

However, a showing that the geographic place is known to the public and could be the source of the goods or services may not be enough in itself to establish a goods/place or services/place association in all cases. See In re Mankovitz, 90 USPQ2d 1246 (TTAB 2009) (THE MONTECITO DIET held not primarily geographically descriptive and the evidence of a goods/place or services/place association, consisting only of the fact that the applicant lived in Montecito, found insufficient, the Board stating that "it would be speculation on our part to reach the conclusion that the goods or services originate there or that the public would understand that there is a goods/place relationship"); In re John Harvey & Sons Ltd., 32 USPQ2d 1451 (TTAB 1994) (HARVEYS BRISTOL CREAM not primarily geographically descriptive of cakes flavored with sherry wine, the Board finding evidence that applicant’s headquarters are located in Bristol, England and that applicant’s sherry wine was once bottled there insufficient to show that American consumers are likely to think that "Bristol" refers to a place from which the goods originate); In re Gale Hayman Inc., 15 USPQ2d 1478 (TTAB 1990) (SUNSET BOULEVARD held not primarily geographically descriptive of perfume and cologne, the Board holding that the mere fact that applicant’s principal offices are in Century City, close to Sunset Boulevard does not mandate a finding that a goods/place association should be presumed, determining that the public would not make a goods/place association, and noting that there was no evidence that any perfume or cologne is manufactured or produced on Sunset Boulevard or that applicant’s goods are sold there); Philip Morris Inc. v. Reemtsma Cigarettenfabriken GmbH, 14 USPQ2d 1487 (TTAB 1990) (PARK AVENUE held neither deceptive nor geographically deceptively misdescriptive as applied to cigarettes and smoking tobacco, the Board finding no goods/place association between tobacco products and Park Avenue in New York City, on which opposer’s world headquarters was located); In re Venice Maid Co., Inc., 222 USPQ 618, 619 (TTAB 1984) (VENICE MAID held not primarily geographically deceptively misdescriptive of canned foods, including, inter alia, lasagna and spaghetti, where the evidence of a goods/place association was found insufficient, the Board stating that "we are unwilling to sustain the refusal to register in this case simply on the basis that Venice is a large Italian city that could, conceivably, be the source of a wide range of goods, including canned foods").

The question of whether there is a goods/place association is determined on a case-by-case basis, based on the evidence in the record. Compare 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) with 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).

1210.04(b)    Establishing Services/Place Association

It is more difficult, with respect to refusals under §§2(a) and 2(e)(3), to establish a services/place association than a goods/place association. The Court of Appeals for the Federal Circuit has provided the following guidance for refusals under §2(e)(3):

Application of the second prong of this test – the services-place association – requires some consideration. A customer typically receives services, particularly in the restaurant business, at the location of the business. Having chosen to come to that place for the services, the customer is well aware of the geographic location of the service. This choice necessarily implies that the customer is less likely to associate the services with the geographic location invoked by the mark rather than the geographic location of the service, such as a restaurant. In this case, the customer is less likely to identify the services with a region of Paris when sitting in a restaurant in New York.

[T]he services-place association operates somewhat differently than a goods-place association…. In a case involving goods, the goods-place association often requires little more than a showing that the consumer identifies the place as a known source of the product [citations omitted]. Thus, to make a goods-place association, the case law permits an inference that the consumer associates the product with the geographic location in the mark because that place is known for producing the product. [citation omitted] In the case of a services-place association, however, a mere showing that the geographic location in the mark is known for performing the service is not sufficient. Rather the second prong of the test requires some additional reason for the consumer to associate the services with the geographic location invoked by the mark. See In re Mun. Capital Mkts., Corp., 51 USPQ2d 1369, 1370–71 (TTAB 1999) ("Examining Attorney must present evidence that does something more than merely establish that services as ubiquitous as restaurant services are offered in the pertinent geographic location."). Thus, a services-place association in a case dealing with restaurant services … requires a showing that the patrons of the restaurant are likely to believe the restaurant services have their origin in the location indicated by the mark. In other words, to refuse registration under section 2(e)(3), the PTO must show that patrons will likely be misled to make some meaningful connection between the restaurant (the service) and the relevant place.

For example, the PTO might find a services-place association if the record shows that patrons, though sitting in New York, would believe the food served by the restaurant was imported from Paris, or that the chefs in New York received specialized training in the region in Paris, or that the New York menu is identical to a known Parisian menu, or some other heightened association between the services and the relevant place….

In re Les Halles De Paris J.V., 334 F.3d 1371, 1373–74, 67 USPQ2d 1539, 1541–42 (Fed. Cir. 2003) (LE MARAIS held not primarily geographically deceptively misdescriptive of restaurant services. Evidence that "Le Marais" was a fashionable Jewish area in Paris was insufficient to establish that the public would believe that "Le Marais" was the source of New York restaurant services featuring a kosher cuisine).

What constitutes a "heightened association" between the services and the place will vary depending on the nature of the services. There may be situations where the fact that the geographic location is known or famous for performing the service would be sufficient to establish a services/place association (e.g. , "Texas" for cattle breeding services).

The burden is greater for restaurant services, due to their ubiquitous nature. In re Consol. Specialty Rests., Inc., 71 USPQ2d 1921 (TTAB 2004) (COLORADO STEAKHOUSE and design held primarily geographically deceptively misdescriptive of restaurant services). In Consol. Specialty Rests., the Board found that the examining attorney had established an "additional reason" why purchasers would mistakenly believe that the food served in the restaurant was from Colorado, where the record contained the following evidence: gazetteer and dictionary definitions of "Colorado" and "steakhouse;" a United States Department of Agriculture report on cattle inventory; stories excerpted from the LexisNexis® database; and Internet excerpts showing that Colorado was one of the 11 top cattle states in the United States, that Colorado was known for its steaks, that "Colorado steaks" are featured food items in restaurants outside the state, and that politicians from Colorado use "Colorado steaks" as the basis for wagers on sporting events. Id. at 1927-28.

1210.04(c)    Obscure or Remote Geographic Marks

Geographic matter may be so obscure or remote that it would not be recognized as an indication of the geographic source of the goods or services. In such a case, the mark is treated as an arbitrary designation because its geographic meaning is likely to be lost on consumers. Thus, consumers will not perceive the geographic significance of the term as its primary significance and will not make a goods/place or services/place association. See In re Brouwerij Nacional Balashi NV, 80 USPQ2d 1820, 1827 (TTAB 2006) (finding Balashi, Aruba so obscure or remote that purchasers in the United States would not recognize it as indicating the geographical source of applicant’s beer); ConAgra Inc. v. Saavedra, 4 USPQ2d 1245 (TTAB 1987) (TAPATIO held not primarily geographically deceptively misdescriptive of meatless hot sauce, despite the fact that the mark is a Spanish term meaning "of or pertaining to Guadalajara, Mexico" and the goods did not originate from Guadalajara, the Board finding that the significance of the term is lost on the public because of its obscurity); In re Bavaria St. Pauli Brauerei AG, 222 USPQ 926 (TTAB 1984) (reversing examining attorney’s requirement for disclaimer of "JEVER" in application to register JEVER and design for beer originating in Jever, West Germany, where the sole evidence of a goods/place association was an entry from a 32-year-old geographic index); In re Brauerei Aying Franz Inselkammer KG, 217 USPQ 73 (TTAB 1983) (AYINGER BIER ("BIER" disclaimed) held not primarily geographically descriptive of beer emanating from Aying, West Germany, a hamlet of 500 inhabitants, where the examining attorney’s only evidence of a goods/place association was the specimen label identifying Aying as the place of origin).

Remoteness or obscurity is determined from the perspective of the average American consumer. See In re Societe Generale des Eaux Minerales de Vittel, S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987) (VITTEL and design held not primarily geographically descriptive of cosmetic products because of lack of goods/place association between the goods and the applicant’s place of business in Vittel, France). However, the examining attorney does not necessarily have to show that the nationwide general public would associate the mark with the place. The significance of the term is determined not in the abstract, but from the point of view of the consumers of the particular goods or services identified in the application. In re MCO Properties Inc., 38 USPQ2d 1154 (TTAB 1995) (FOUNTAIN HILLS held primarily geographically descriptive of real estate development services rendered in Fountain Hills, Arizona, where the record showed that Fountain Hills was the name of the town where the applicant was located and rendered its services, and that the purchasers who came in contact with the mark would associate that place with the services).

1210.04(d)    Arbitrary Use of Geographic Terms

The name of a geographic location that has no significant relation to commercial activities or the production of the relevant goods or services, such as ALASKA for bananas, is treated as an arbitrary mark because it is unlikely that consumers would believe that the mark identifies the place from which the goods originate.

Often, names of mountains or rivers are arbitrary for goods because no commercial activity is performed there. For example, "Colorado River" for candy bars or "Mount Rushmore" for automobiles would be arbitrary. See In re Nantucket, Inc., 677 F.2d 95, 105, 213 USPQ 889, 897 (C.C.P.A. 1982) (Nies, J., concurring) ("Thus, the names of places devoid of commercial activity are arbitrary usage. In this category are names of places such as ANTARCTICA, MOUNT EVEREST, or GALAPAGOS, at least when used for ordinary commercial products, such as beer and shoes. Names such as SUN, WORLD, GLOBE, MARS, or MILKY WAY are also arbitrary, not informational; competitors do not need to use the terms to compete effectively.").

1210.05    Geographically Deceptive Marks

1210.05(a)    Basis for Refusal

Past Practice. Prior to the amendment of the Trademark Act by the NAFTA Implementation Act, the test for determining whether a mark was primarily geographically deceptively misdescriptive under §2(e)(3) of the Trademark Act differed from the test for determining whether a mark was deceptive under §2(a) of the Act, 15 U.S.C. §1052(a).  To establish that a mark was primarily geographically deceptively misdescriptive under §2(e)(3), the examining attorney had to show that the primary significance of the mark was geographic, that purchasers would be likely to believe that the goods or services originated in the place named in the mark, and that the goods or services did not originate in that place. In re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889 (C.C.P.A. 1982) . An additional showing of "materiality" was required to establish that a mark was deceptive under §2(a), i.e., a showing that a goods/place or services/place association made by purchasers was "material" to the decision to purchase the goods or services. Bureau Nat’l Interprofessionnel Du Cognac v. Int'l Better Drinks Corp., 6 USPQ2d 1610 (TTAB 1988) ; In re House of Windsor, Inc., 221 USPQ 53 (TTAB 1983) , recon. denied, 223 USPQ 191 (TTAB 1984).

Current Practice. The Court of Appeals for the Federal Circuit has held that with the NAFTA amendments, §2 of the Act "no longer treats geographically deceptively misdescriptive marks differently from geographically deceptive marks," and that a showing of public deception is required to establish that a mark is unregistrable under §2(e)(3). In re Cal. Innovations Inc., 329 F.3d 1334, 1339, 66 USPQ2d 1853, 1856 (Fed. Cir. 2003), reh’g denied, 2003 U.S. App. LEXIS 18883 (Fed. Cir. Aug. 20, 2003). Thus, the test for determining whether, post-NAFTA, 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). Id., 329 F.3d at 1340, 66 USPQ2d at 1857.

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) .

1210.05(c)    Determining Materiality

To establish that a geographic term is primarily geographically deceptively misdescriptive under 15 U.S.C. §1052(e)(3)  or deceptive under §2(a), it must be shown that the goods/place or services/place association made by a consumer is material to the consumer’s decision to purchase those goods/services. In re Cal. Innovations Inc., 329 F.3d 1334, 1340, 66 USPQ2d 1853, 1856 (Fed. Cir. 2003), reh’g denied, 2003 U.S. App. LEXIS 18883 (Fed. Cir. Aug. 20, 2003).

1210.05(c)(i)    Materiality In Cases Involving Goods

In determining "materiality," the Board has stated that it looks to evidence regarding the probable reaction of purchasers to a particular geographical term when it is applied to particular goods. See In re House of Windsor, Inc., 221 USPQ 53, 56 (TTAB 1983), recon. denied, 223 USPQ 191 (TTAB 1984). Materiality may be established inferentially based on indirect evidence such as gazetteer entries and third-party websites. See Corporacion Habanos, S.A. v. Guantanamera Cigars Co., 102 USPQ2d 1085, 1098 (TTAB 2012) . If the evidence shows that the geographical area named in the mark is sufficiently known to lead purchasers to make a goods/place association, but the record does not show that the relevant goods are a principal product of that geographical area, the deception will most likely be found not to be material. If, however, there is evidence that the relevant goods, or related goods, are a principal product of the geographical area named by the mark, then the deception will most likely be found to be material.

Furthermore, evidence that a place is famous as a source of the goods at issue raises an inference in favor of materiality. In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841, 1850 (TTAB 2012) ; see In re Les Halles De Paris J.V., 334 F.3d 1371, 1374, 67 USPQ2d 1539, 1542 (Fed. Cir. 2003). Such evidence supports a presumption that a substantial portion of the relevant consumers is likely to be deceived.

Thus, to establish the materiality element for goods, the evidence must show that:

• The place named in the mark is famous as a source of the goods at issue;
• The goods in question are a principal product of the place named in the mark; or
• The goods are, or are related to, the traditional products of the place named in the mark, or are an expansion of the traditional products of the place named in the mark.

See Cal. Innovations, 329 F.3d at 1340, 66 USPQ2d at 1857; In re Save Venice N.Y., Inc., 259 F.3d 1346, 1355, 59 USPQ2d 1778, 1784 (Fed. Cir. 2001); Compania de Licores Internacionales, 102 USPQ2d at 1850; House of Windsor, 221 USPQ at 57.

Searches that combine the place name with the name of the goods and terms such as "famous," "renowned," "well-known," "noted for," "principal," or "traditional" may be useful to establish materiality. Compania de Licores Internacionales, 102 USPQ2d at 1850.

Note that in U.S. Playing Card Co. v. Harbro, LLC, 81 USPQ2d 1537, 1542 (TTAB 2006) , the Board held that the mark VEGAS was not primarily geographically deceptively misdescriptive of playing cards that do not originate in Las Vegas, finding that the opposer failed to establish that the misleading goods/place association would be a material factor in the customer’s decision to purchase the goods. The Board rejected opposer’s argument that it had met the materiality factor by proving that there is a market for cancelled casino cards from Las Vegas casinos, stating that "[a]lthough the evidence demonstrates that consumers are interested in obtaining cards that were used in casinos, the evidence does not establish that they are interested in purchasing playing cards that were manufactured or used in Las Vegas." The Board also disagreed with opposer’s contention that the goods/place association between Las Vegas and playing cards was so strong that materiality could be presumed.

1210.05(c)(ii)    Materiality In Cases Involving Services

In a case involving services, a showing that the geographic location in the mark is known for performing the service is not sufficient, unless it rises to the level of fame. This is especially true for restaurant services because, having chosen a particular restaurant, a customer is aware of the geographic location of the service and is less likely to associate the services with the place named in the mark (e.g., a customer is less likely to identify restaurant services with a region of Paris when sitting in a restaurant in New York).

Therefore, before addressing materiality, the examining attorney must satisfy the services/place association prong by providing evidence of an additional reason for the consumer to associate the services with the geographic location invoked by the mark. For example, the examining attorney could provide evidence that a customer sitting in a restaurant in one location would believe that:

• The food came from the place named in the mark; or
• The chef received specialized training in the place identified in the mark; or
• The menu is identical to a known menu from the geographic location named in the mark.

See In re Les Halles De Paris J.V., 334 F.3d 1371, 1374, 67 USPQ2d 1539, 1541–1542 (Fed. Cir. 2003); In re Consol. Specialty Rests., Inc., 71 USPQ2d 1921, 1927 (TTAB 2004) .

This heightened association between the services and geographic place named in the mark raises an inference of deception or materiality for a service mark. The Court of Appeals for the Federal Circuit has provided the following guidance regarding additional evidence that would be sufficient to satisfy the materiality element:

In any event, the record might show that customers would patronize the restaurant because they believed the food was imported from, or the chef was trained in, the place identified by the restaurant’s mark. The importation of food and culinary training are only examples, not exclusive methods of analysis….

Les Halles De Paris, 334 F.3d at 1375, 67 USPQ2d at 1542.

In Consol. Specialty Rests., Inc., the Board held COLORADO STEAKHOUSE and design primarily geographically deceptively misdescriptive of restaurant services. In the course of that holding, the Board found that a mistaken belief that the steaks served in applicant’s restaurant were from Colorado would be material to the customer’s decision to patronize the restaurant, where the record contained the following evidence: gazetteer and dictionary definitions of "Colorado" and "steakhouse;" a United States Department of Agriculture report on cattle inventory; stories excerpted from the LexisNexis® database; and Internet excerpts showing that Colorado was one of the 11 top cattle states in the United States, that Colorado was known for its steaks, that "Colorado steaks" are featured food items in restaurants outside the state, and that politicians from Colorado use "Colorado steaks" as the basis for wagers on sporting events. Id. at 1924-28. The Board stated that "an inference of materiality arises where there is a showing of a ‘heightened association’ between the services and the geographic place or, in other words, a showing of ‘a very strong services-place association.’" Id. at 1928.

See also TMEP §§1203.02–1203.02(g) regarding deceptive marks, and TMEP §1210.08 regarding geographical designations used on or in connection with wines or spirits that identify a place other than the origin of the goods.

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.

1210.05(d)(i)    Neither Applicant Nor Goods/Services Come from the Place Named

To ensure that no geographically deceptively misdescriptive marks claiming use in commerce or acquired distinctiveness prior to December 8, 1993 are registered on the Supplemental Register or under §2(f) when it is clear that neither the applicant nor the goods/services come from the place named in the mark, the examining attorney must determine whether the misdescription would be material and follow the procedures outlined below:

• If the examining attorney determines that the misdescription would not be material to the decision to purchase, no refusal should be made. If the application is otherwise in condition for publication, the examining attorney should approve the mark for publication.
• If the examining attorney determines that the misdescription would be material to the decision to purchase, and the application claims use in commerce prior to December 8, 1993, the examining attorney must issue a nonfinal refusal under §2(a), supported by appropriate evidence.
• If the examining attorney determines that the misdescription would be material to the decision to purchase, and the application does not claim use prior to December 8, 1993, the examining attorney must issue nonfinal refusals under §§2(e)(3) and 2(a), supported by appropriate evidence.

Depending upon the applicant’s response to a nonfinal refusal under §§2(e)(3) and 2(a), the examining attorney will ultimately issue a final refusal under either §2(e)(3) or §2(a):

• If the applicant’s response does not claim use or acquired distinctiveness prior to December 8, 1993, the examining attorney must withdraw the §2(a) refusal and issue a final refusal under §2(e)(3), if otherwise appropriate.
• In the rare circumstance that the applicant responds by claiming use prior to December 8, 1993 and amends to the Supplemental Register, or establishes that the mark acquired distinctiveness under §2(f) prior to December 8, 1993, to ensure that a geographically deceptively misdescriptive mark will not be allowed to register, the examining attorney must withdraw the §2(e)(3) refusal and issue a final refusal under §2(a), if otherwise appropriate.

In re S. Park Cigar, Inc., 82 USPQ2d 1507, 1509, n.3 (TTAB 2007) . See also Corporacion Habanos, S.A. v. Guantanamera Cigars Co., 86 USPQ2d 1473, 1475 (TTAB 2008) (Board considered only the §2(e)(3) claim in opposition based on both §§2(a) and 2(e)(3)); In re Beaverton Foods, Inc., 84 USPQ2d 1253, 1257 (TTAB 2007) ("[W]here an applicant is seeking registration for a mark with a geographic term on the Principal Register under Section 2(f) based on a claim that the mark had acquired distinctiveness prior to December 8, 1993, a geographically deceptive mark is properly refused registration under Section 2(a). Nothing in the statute or legislative history dictates otherwise. Moreover, this analysis is consistent with the practice of the USPTO.").

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.

1210.05(e)    Geographically Deceptive Matter: Case References

In re Miracle Tuesday LLC, 695 F3d 1339, 104 USPQ2d 1330 (Fed. Cir. 2012) (affirming the TTAB’s refusal to register JPK PARIS 75 and design as primarily geographically deceptively misdescriptive for fashion accessories that did not originate in Paris); In re Spirits Int’l, N.V., 563 F.3d 1347, 90 USPQ2d 1489 (Fed. Cir. 2009) (remanding case to Trademark Trial and Appeal Board to determine whether a substantial portion of the relevant consumers would translate and be materially deceived by the Russian term Moskovskaya for vodka); In re Les Halles De Paris J.V., 334 F.3d 1371, 1375, 67 USPQ2d 1539, 1542 (Fed. Cir. 2003) (Court found that the record did not show that a diner at the restaurant in question would identify the region in Paris named in the mark as a source of the restaurant services or that a material reason for the choice of the restaurant was its identity with the region in Paris); In re Cal. Innovations Inc., 329 F.3d 1334, 66 USPQ2d 1853 (Fed. Cir. 2003), reh’g denied, 2003 U.S. App. LEXIS 18883 (Fed. Cir. Aug. 20, 2003) (TTAB found to have applied an outdated standard of review under §2(e)(3), case remanded for application of new, post-NAFTA test); In re Save Venice New York Inc., 259 F.3d 1346, 59 USPQ2d 1778 (Fed. Cir. 2001) (THE VENICE COLLECTION and SAVE VENICE INC. composite marks featuring an image of the winged Lion of St. Mark held primarily geographically deceptively misdescriptive of products that do not originate in Venice, Italy, where an encyclopedia and a gazetteer showed that Venice was a well known center for the manufacture of glass, lace, art objects, jewelry, cotton, and silk textiles); In re Wada, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999) (NEW YORK WAYS GALLERY held primarily geographically deceptively misdescriptive where manufacturing listings and Nexis® excerpts showed that New York was well known as a place where leather goods and handbags are designed and manufactured); In re Premiere Distillery, LLC, 103 USPQ2d 1483 (TTAB 2012) (finding REAL RUSSIAN primarily geographically deceptively misdescriptive for vodka); In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841 (TTAB 2012) (finding OLD HAVANA primarily geographically deceptively misdescriptive for rum and applicant’s claim of acquired distinctiveness insufficient); Corporacion Habanos, S.A. v. Guantanamera Cigars Co., 102 USPQ2d 1085 (TTAB 2012) (finding GUANTANAMERA, a Spanish word meaning "girl from Guantanamo" or "of or from Guantanamo, Cuba," primarily geographically deceptively misdescriptive for cigars not from Cuba); In re Jonathan Drew, Inc., 97 USPQ2d 1640 (TTAB 2011) (finding KUBA KUBA primarily geographically deceptively misdescriptive of cigars, tobacco, and related products that did not originate in Cuba nor would they be made from Cuban seed tobacco); Corporacion Habanos, S.A. v. Anncas, Inc., 88 USPQ2d 1785 (TTAB 2008) (HAVANA CLUB found primarily geographically deceptively misdescriptive of cigars made from Cuban seed tobacco since Havana is world renowned for cigars and consumers would believe that the cigars originate in Havana when, in fact, they do not); In re Cheezwhse.com, Inc., 85 USPQ2d 1917 (TTAB 2008) (NORMANDIE CAMEMBERT held primarily geographically descriptive of cheese because Normandy, France was famous for cheese and the Board presumed that the goods would originate there, and, in the alternative, primarily geographically deceptively misdescriptive for cheese, based on the presumption that the goods would not originate there, since applicant failed to submit information about the origin of the goods); In re Beaverton Foods, Inc., 84 USPQ2d 1253 (TTAB 2007) (NAPA VALLEY MUSTARD CO. for mustard that did not originate in Napa Valley, California held deceptive, where the record contained printouts from various websites showing use of NAPA VALLEY in relation to mustard by third parties, evidence of a widely advertised annual Napa Valley Mustard Festival, evidence of the connection of Napa Valley to wineries and gourmet food, and copies of advertisements for applicant’s goods which imply that the mustard originates in Napa Valley); In re S. Park Cigar, Inc., 82 USPQ2d 1507 (TTAB 2007) (YBOR GOLD held primarily geographically deceptively misdescriptive of cigars and tobacco that do not come from the Ybor City area of Tampa, Florida, given the prominence of Ybor City as a current and historical source of cigars); In re Consol. Specialty Rests., Inc., 71 USPQ2d 1921 (TTAB 2004) (Board found that patrons of applicant’s restaurants, COLORADO STEAKHOUSE, would believe the steaks that were served would come from Colorado); In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694 (TTAB 1992) (LONDON LONDON held deceptive for clothing having no connection with London, given the renown of London as a center for contemporary as well as traditional fashions); In re Sharky's Drygoods Co., 23 USPQ2d 1061 (TTAB 1992) (holding that the juxtaposition of "Paris" with "Beach Club" results in incongruous phrase, and purchasers, thus, will view PARIS BEACH CLUB as humorous mark in which "Paris" is used facetiously rather than as geographic reference); In re Perry Mfg. Co., 12 USPQ2d 1751 (TTAB 1989) (PERRY NEW YORK and design, with a disclaimer of NEW YORK, held deceptive for various items of clothing that originate in North Carolina, and have no connection with New York, because of the renown of New York in the apparel industry); In re House of Windsor, Inc., 221 USPQ 53 (TTAB 1983) , recon. denied, 223 USPQ 191 (TTAB 1984) (BAHIA held deceptive of cigars that do not originate in the Bahia province of Brazil, where the evidence of record was "unequivocal" that tobacco and cigars are important products in the Bahia region).

1210.06    Procedure for Examining Geographic Composite Marks

A geographic composite mark is one composed of geographic matter coupled with additional matter (e.g., wording and/or a design element). When examining such a mark, the examining attorney must first determine the primary significance of the composite. See TMEP §§1210.02(c)–1210.02(c)(iii).

Composite marks present unique issues in regard to both geographically descriptive and misdescriptive refusals. When evaluating whether the mark’s primary significance is a generally known geographic location, a composite mark must be evaluated as a whole. See In re Save Venice New York Inc., 259 F.3d 1346,1352, 59 USPQ2d 1778, 1782 (Fed. Cir. 2001); In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1748(TTAB 2016) . In order to do so, the examining attorney may also consider the significance of each element within the mark. In re Save Venice New York Inc., 259 F.3d at 1352, 59 USPQ2d at 1782 .

For example, the mark PARIS BEACH CLUB, for clothing, was held not to be perceived as primarily geographic. In re Sharky's Drygoods Co., 23 USPQ2d 1061 (TTAB 1992) . Because Paris is known for haute couture, is not located on an ocean or lake and does not have a beach, the Board found that the juxtaposition of PARIS with BEACH CLUB resulted in an incongruous phrase and that the word PARIS would be viewed as a facetious rather than a geographic reference. Id. at 1062. The mark NEW YORK WAYS GALLERY, however, was found to be geographically deceptive. In re Wada, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999). The Board determined that (1) NEW YORK was not an obscure geographical term; (2) NEW YORK was known as a place where the goods at issue were designed, manufactured, and sold; and (3) the primary geographic significance was not lost by the addition of WAYS GALLERY to NEW YORK. Likewise, in the case of the mark YBOR GOLD, the Board held that the mere addition of the word GOLD to the geographic designation YBOR did not result in an arbitrary, fanciful, or suggestive composite. In re S. Park Cigar, Inc., 82 USPQ2d 1507 (TTAB 2007) . The Board determined that GOLD connoted the high quality of the goods and thus did not detract from the geographic significance of YBOR or negate the primarily geographic significance of the mark as a whole. Id. at 1513.

Depending on the primary significance of the composite, the examining attorney will handle the geographic issue in a geographic composite mark in one of the following ways:

• (1) If the examining attorney finds that the mark, when viewed as a whole, is arbitrary, fanciful, or suggestive, he or she will approve the mark for publication without evidence that the mark has acquired distinctiveness under §2(f). However, 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, within the Office of the Deputy Commissioner for Trademark Examination Policy;
• (2) If the examining attorney finds that the mark is primarily geographically descriptive under §2(e)(2) without a showing of acquired distinctiveness, primarily geographically deceptively misdescriptive under §2(e)(3), or deceptive under §2(a), he or she will refuse registration of the mark as a whole; or
• (3) If the examining attorney finds that the geographic matter is a separable part of the mark, the examining attorney’s action will depend on whether the matter is primarily geographically descriptive, primarily geographically deceptively misdescriptive, or deceptive. See TMEP §1210.06(a) regarding primarily geographically descriptive composites, and TMEP §1210.06(b) regarding primarily geographically deceptively misdescriptive and deceptive composites.

1210.06(a)    Marks That Include Primarily Geographically Descriptive Terms Combined With Additional Matter

If a composite mark comprises a geographic term that is primarily geographically descriptive of the goods or services under §2(e)(2), and the mark as a whole would be likely to be perceived as indicating the geographic origin of the goods or services, then the examining attorney must consider: (1) whether the geographic term is a separable element in the mark; and (2) the nature of the additional matter that makes up the composite mark.

If the geographic term is not a separable element or if none of the additional matter that makes up the composite mark is inherently distinctive (e.g., it is merely descriptive or incapable), then the examining attorney must refuse registration of the entire mark on the Principal Register pursuant to §2(e)(2).

If the geographic term is a separable element and the additional matter making up the mark is inherently distinctive as applied to the goods or services (i.e., coined, arbitrary, fanciful, or suggestive), the applicant may either: (1) register the mark on the Principal Register with a disclaimer of the geographic term; or (2) establish that the geographic term has acquired distinctiveness under §2(f).

A disclaimer is appropriate where the geographic component is a separable feature of the mark, and the composite mark includes an inherently distinctive, non-disclaimed component (e.g., coined, arbitrary, fanciful, or suggestive wording or design). The composite mark must include a non-disclaimed component because a mark cannot be registered if all the components have been disclaimed. See TMEP §§1213-1213.11 regarding disclaimer.

When the examining attorney requires a disclaimer of primarily geographically descriptive matter, the applicant may seek to overcome the disclaimer requirement by submitting a showing that the geographic term has become distinctive under §2(f). See TMEP §§1210.07(b) and 1212.02(f) regarding §2(f) claims as to a portion of the mark.

A term that is primarily geographically descriptive of the goods or services under §2(e)(2) may be registered on the Supplemental Register in an application under §1 or §44 of the Trademark Act, if it is not barred by other section(s) of the Act. See TMEP §1210.07(a).

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.

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.

1210.07    Supplemental Register and §2(f)

1210.07(a)    Registrability of Geographic Terms on the Supplemental Register

Primarily Geographically Descriptive Marks. A term that is primarily geographically descriptive of the goods/services under §2(e)(2) may be registered on the Supplemental Register, if it is not barred by other section(s) of the Act. See TMEP §714.05(a)(i). However, in certain circumstances, a primarily geographically descriptive mark may be considered incapable. See In re Bee Pollen from Eng. Ltd., 219 USPQ 163 (TTAB 1983) (finding BEE POLLEN FROM ENGLAND incapable of distinguishing bee pollen from England); Mineco, Inc. v. Lone Mountain Turquoise Mine, 217 USPQ 466 (TTAB 1983) (finding LONE MOUNTAIN incapable of distinguishing turquoise from the Lone Mountain Mine).

Primarily Geographically Deceptively Misdescriptive Marks. A mark that is found to be primarily geographically deceptively misdescriptive under §2(e)(3) may not be registered on the Supplemental Register unless the mark has been in lawful use in commerce since before December 8, 1993, the date of enactment of the NAFTA Implementation Act. Section 23(a) of the Trademark Act, 15 U.S.C. §1091(a).  If the applicant claims use prior to December 8, 1993 and seeks registration on the Supplemental Register, or amends to the Supplemental Register, the examining attorney must refuse registration under §2(a). See TMEP §1210.05(d)(i).

Geographically Deceptive Marks. A mark that is deceptive under §2(a) may not be registered on the Supplemental Register. In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1696 (TTAB 1992).

NOTE: A mark in a §66(a) application cannot be registered on the Supplemental Register under any circumstances. 15 U.S.C. §1141h(a)(4); 37 C.F.R. §§2.47(c)  and 2.75(c).

1210.07(b)    Registrability of Geographic Terms under §2(f)

Primarily Geographically Descriptive Marks. A term that is primarily geographically descriptive of the goods/services under §2(e)(2) may be registered on the Principal Register if it is shown to have acquired distinctiveness under §2(f). See TMEP §714.05(a)(i) regarding a §2(f) claim submitted with an allegation of use in response to a refusal and §§1212–1212.10 regarding §2(f).

Primarily Geographically Deceptively Misdescriptive Marks. A mark that is primarily geographically deceptively misdescriptive under §2(e)(3) may not be registered under §2(f) unless the mark became distinctive of the goods or services in commerce before December 8, 1993, the date of enactment of the NAFTA Implementation Act. See In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841, 1852 (TTAB 2012) ; In re Boyd Gaming Corp., 57 USPQ2d 1944, 1947 (TTAB 2000) ; Fred Hayman Beverly Hills Inc. v. Jacques Bernier Inc., 38 USPQ2d 1691, 1692 (TTAB 1996).

If the applicant claims that the mark acquired distinctiveness prior to December 8, 1993, the examining attorney must refuse registration under §2(a). See TMEP §1210.05(d)(i).

Geographically Deceptive Marks. A mark that is deceptive under §2(a) may not be registered on the Principal Register even under §2(f).

Section 2(f) in Part. An applicant may claim that a geographic component of a mark has acquired distinctiveness under §2(f). See TMEP §1212.02(f) regarding claims of acquired distinctiveness as to a portion of a mark. Thus, if the examining attorney requires a disclaimer of matter that is primarily geographically descriptive under §2(e)(2), the applicant may seek to overcome the disclaimer requirement by submitting a showing that the geographic component has acquired distinctiveness under §2(f). If the applicant is able to establish to the satisfaction of the examining attorney that the geographic component has acquired distinctiveness, the examining attorney will approve the mark for publication with a notation that there is a claim of distinctiveness under §2(f) as to the geographic component, if appropriate.

1210.08    Geographical Indications Used on Wines and Spirits

Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a),  prohibits the registration of a designation that consists of or comprises "a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after [January 1, 1996]." This provision was added by the Uruguay Round Agreements Act, implementing the Trade-Related Intellectual Property ("TRIPs") portions of the General Agreement on Tariffs and Trade ("GATT"). This provision does not apply to geographic indications that were first used in commerce on or in connection with wines or spirits prior to January 1, 1996.

The term "spirits" refers to "a strong distilled alcoholic liquor" (e.g., gin, rum, vodka, whiskey, or brandy). Random House Webster’s Unabridged Dictionary 1839 (2nd ed. 1998). This provision does not apply to designations used on or in connection with beer, nor does it apply to goods that are not wines or spirits, but are partially composed of wines or spirits (e.g., wine vinegar, wine sauces, wine jelly, rum balls, bourbon chicken).

This provision of §2(a) applies if the applicant’s identification of goods: (1) specifically includes wines or spirits; or (2) describes the goods using broad terms that could include wines or spirits (e.g., alcoholic beverages).

Section 2(a) is an absolute bar to the registration of these geographical designations on either the Principal Register or the Supplemental Register. Neither a disclaimer of the geographical designation nor a claim that it has acquired distinctiveness under §2(f) can obviate a §2(a) refusal if the mark consists of or comprises a geographical indication that identifies a place other than the origin of the wines or spirits.

See TMEP §1210.08(a) regarding geographical indications used on wines and spirits that do not originate in the named place, TMEP §1210.08(b) regarding geographical indications used on wines and spirits that originate in the named place, TMEP §1210.08(c) regarding geographical indications that are generic for wines and spirits, and TMEP §1402.03(g) regarding situations in which the name and/or acronym of a trademark protection system or scheme for a geographical indication appears in an identification.

1210.08(a)    Geographical Indications Used on Wines and Spirits That Do Not Originate in the Named Place

In implementing the TRIPs Agreement through the Uruguay Round Agreements Act ("URAA"), Pub. L. No. 103-465, 108 Stat. 4809 (1994), Congress approved a Statement of Administrative Action ("SAA") which provides, in part, that:

"Geographical indications" are defined in TRIPs Article 22.1 as "indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin." The Administration expects that this definition will be applied in the context of trademark registration and that a "geographical indication" as used in this provision will be interpreted to comprise only those areas which have a reputation for being associated with the specific goods at issue. Obscure areas or those that do not have a reputation or other characteristics generally associated with wines or spirits should not be prohibited from registration (emphasis added).

Statement of Administrative Action, Agreement on Trade-Related Aspects of Intellectual Property Rights, H.R. Doc. No. 103-316, §B.1.e (1994); 19 U.S.C. §§3511(a)(2)  and 3512(d).

A designation is considered a geographical indication under §2(a) if it identifies the applicant’s wines or spirits as originating in a territory known for a given quality, reputation, or other characteristic associated with wines or spirits. A mark for wines or spirits that includes a geographical indication is unregistrable if: (1) purchasers would erroneously believe that the goods originate in the relevant geographic location; and (2) the quality, reputation, or characteristic associated with wines or spirits from that location would materially affect the purchaser’s decision to buy the goods.

To establish a prima facie case for refusal to register a mark under the "wines and spirits" provision of §2(a), the following is required:

• (1) The primary significance of the relevant term or design is geographic, e.g., a place name, abbreviation, nickname, or symbol; or an outline or map of a geographic area (see TMEP §§1210.02(a)–1210.02(b)(iv));
• (2) Purchasers would be likely to think that the goods originate in the geographic place identified in the mark, i.e., purchasers would make a goods/place association (see TMEP §§1210.04–1210.04(d));
• (3) The goods do not originate in the place identified in the mark (see TMEP §1210.03);
• (4) A purchaser's erroneous belief as to the geographic origin of the goods would materially affect the purchaser's decision to buy the goods (see TMEP §§1210.05(c)–1210.05(c)(ii)); and
• (5) The mark was first used in commerce by the applicant on or after January 1, 1996.

Section 2(a) is an absolute bar to the registration of false geographical indications used on wines or spirits on either the Principal Register or the Supplemental Register. Neither a disclaimer of the geographic term or design nor a claim that it has acquired distinctiveness under §2(f) of the Trademark Act, 15 U.S.C. §1052(f),  can obviate a §2(a) refusal if the mark consists of or includes a geographical indication that identifies a place other than the true origin of the wines or spirits.

Requirement for First Use On or After January 1, 1996

For all applications filed under §1(b), §44, or §66(a) of the Trademark Act, 15 U.S.C. §1051(b), §1126, or §1141f(a), or for applications filed under §1(a) of the Trademark Act, 15 U.S.C. §1051(a),  where the application fails to indicate the applicant’s date of first use of the mark in commerce, the examining attorney should presume that the applicant’s first use of the mark in commerce is or will be on or after January 1, 1996, unless the application record indicates otherwise.

If the examining attorney determines that a mark featuring a false geographical indication was in use prior to January 1, 1996, the examining attorney must refuse registration because the mark is primarily geographically deceptively misdescriptive under §2(e)(3) of the Trademark Act, 15 U.S.C. §1052(e)(3),  and deceptive under §2(a). See TMEP §1210.05(a).

1210.08(b)    Geographical Indications Used on Wines and Spirits That Originate in the Named Place

If the wines or spirits originate in the identified place, and the primary significance of the mark is a generally known geographic location, the examining attorney should presume the requisite goods/place association, and refuse the mark under §2(e)(2) as geographically descriptive, or require disclaimer of the geographic term, as appropriate. See TMEP §§1210.01(a) and 1210.06(a).

Sometimes, a geographic term is used to certify the geographic origin of wines or spirits. If the proposed mark is used to certify the goods, the applicant may convert the application to one for a certification mark of regional origin under §4 of the Trademark Act, 15 U.S.C. §1054.  See TMEP §1306.06(b) regarding amendment to a different type of mark, and TMEP §§1210.09 and 1306.05-1306.05(c) regarding geographic certification marks.

1210.08(c)    Geographical Indications That Are Generic for Wines and Spirits

When a geographic term or design in the mark is generic for a type of wine or spirit, the examining attorney must refuse registration under §2(e)(1) on the Principal Register or §23 on the Supplemental Register, as appropriate, because the term or design is generic. See TMEP §§1209.02-1209.02(b). Or, if appropriate, the examining attorney must require a disclaimer of the generic term or design. See TMEP §§1213–1213.11 regarding disclaimer.

A geographic term or design is considered generic if United States consumers view it as designating the genus of the goods, rather than their geographic origin. See TMEP §§1209.01(c)–1209.01(c)(iii). If a geographic term or design is used in connection with wines or spirits, the examining attorney may submit a search request to the Trademark Law Library to determine whether there is evidence indicating that the term or design is generic for the applicant’s goods.

1210.09    Geographic Certification Marks

Under certain circumstances, the name of the place from which goods or services originate may function as a certification mark. When geographic terms are used to certify regional origin (e.g., "Idaho" used to certify that potatoes are grown in Idaho), registration of certification marks should not be refused and, in applications to register composite certification marks, disclaimers of these geographic terms should not be required on the ground of geographical descriptiveness. See TMEP §§1306.05(a)–1306.05(c) concerning procedures for registration of certification marks that certify regional origin.

When a geographical term used in a composite certification mark is not used to certify regional origin (e.g. , "California" used to certify that fruit is organically grown), appropriate refusals pursuant to §§2(e)(2), 2(e)(3), or 2(a) should be made.

1210.10    Doctrine of Foreign Equivalents

Under the doctrine of foreign equivalents, foreign words from common, modern languages are translated into English to determine their geographic significance. Although the doctrine arises more often in cases involving likelihood of confusion, descriptiveness, and genericness, the doctrine also applies to issues involving geographic marks. See, e.g., In re Spirits Int’l, N.V., 563 F.3d 1347, 1351, 90 USPQ2d 1489, 1491 (Fed. Cir. 2009) (applying doctrine in determining whether MOSKOVSKAYA, a Russian word meaning "of or from Moscow," was primarily geographically deceptively misdescriptive for vodka not from Moscow); Corporacion Habanos, S.A. v. Guantanamera Cigars Co., 102 USPQ2d 1085 (TTAB 2012) (holding GUANTANAMERA, a Spanish word meaning "girl from Guantanamo" or "of or from Guantanamo, Cuba," primarily geographically deceptively misdescriptive for cigars); In re Joint Stock Co. "Baik", 80 USPQ2d 1305 (TTAB 2006) (holding BAIKALSKAYA, a Russian word meaning "from Baikal," primarily geographically descriptive of vodka from Lake Baikal).

Although words from modern languages are generally translated into English, the doctrine of foreign equivalents is not an absolute rule, but merely a guideline. The doctrine should be applied only when it is likely that the ordinary American purchaser would stop and translate the foreign word into its English equivalent. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005). The "ordinary American purchaser" includes "all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English." Spirits Int’l, 563 F.3d at 1352, 90 USPQ2d at 1492.

While foreign words are generally translated into English for purposes of determining geographic significance, foreign words from dead or obscure languages may be so unfamiliar to the American buying public that they should not be translated into English for descriptiveness purposes. See Enrique Bernat F. S.A. v. Guadalajara Inc., 210 F.3d 439, 443, 54 USPQ2d 1497, 1499 (5th Cir. 2000) (noting that "one policy undergirding the doctrine is ‘the assumption that there are (or someday will be) customers in the U.S. who speak that foreign language.’" (quoting Otokoyama Co. v. Wine of Japan Import, Inc., 175 F.3d 266, 270, 50 USPQ2d 1626, 1629 (2d Cir. 1999))); cf. Gen. Cigar Co. Inc. v. G.D.M. Inc., 988 F. Supp. 647, 660, 45 USPQ2d 1481, 1492 (S.D.N.Y. 1997) (finding it doubtful that prospective purchasers would associate the mark with a word in a language spoken by the indigenous population of the Dominican Republic). The determination of whether a language is "dead" must be made on a case-by-case basis, based upon the meaning that the term would have to the relevant purchasing public.

See TMEP §§809–809.03 for information regarding how to ascertain the meaning of non-English wording in a mark. See also TMEP §§1207.01(b)(vi)–1207.01(b)(vi)(C), 1209.03(g), and 1211.01(a)(vii) regarding the doctrine of foreign equivalents.