Examination Procedures for §2(a)/§2(e)(3) Deceptiveness Refusals for Geographic Marks

Examination Guide 02-09: Examples and Illustrations

Presented by:Andrew Benzmiller and Hope SlonimOffice of Trademark Quality Review and Training

May 12, 2009

2

Objective

This webcast will supplement the material presented in Examination Guide 02-09:

Elements of a §2(a)/§2(e)(3) refusal Evidentiary issues with respect to the refusal Procedures for issuing refusals Composite marks

The focus will be on examples to illustrate these issues and procedures.

3

Absolute Bar to Registration

In contrast to other refusals under §2(e), a deceptiveness refusal under §2(a)/§2(e)(3) is an absolute bar to registration

Cannot be overcome by disclaimer of geographically deceptive term

4

Elements

Primary significance is generally known geographic location

Goods/Services do not originate in place identified

Purchasers would perceive goods/services – place association

Misrepresentation is material factor in purchase decision Proper test is whether significant portion of

relevant consumers is likely to be deceived

5

Determining Materiality: Goods

Place is famous or noted as source of goods:BAHIA: Bahia state (Brazil) noted as

source of tobaccoYBOR GOLD: Ybor City, Fla. famous for

cigarsNORMANDIE CAMEMBERT: Normandy,

France famous for cheese generally and for Camembert in particular

Or

6

Determining Materiality: Goods (cont.) Goods are principal product of place:

NORMANDIE CAMEMBERT: Cheese generally, and Camembert in particular, from Normandy, France

NO-L-ITA: Fashionable clothing from NoLIta neighborhood of Manhattan

Or

7

Determining Materiality: Goods (cont.)

Goods are traditional products of place, or are related to or are an expansion of, traditional products:

Paper, textiles, jewelry, art, glassware, lace, housewares from Venice, Italy

TOSCANA: Furniture from Tuscany, Italy

8

Evidence Search Strategies

Internet or Nexis® searches that combine the place name with the name of goods and terms such as “famous,” “renowned,” “well-known,” “noted for,” “principal,” or “traditional” may be useful to establish materiality

9

Services-Place Association

Mere showing that such services typically emanate from place insufficient

Must show “additional reason” for consumer to associate services with place named, i.e., a “heightened association” between services and place Rationale: Customers more likely to associate

services with place where they’re offered rather than with place named in mark

10

Materiality

“Heightened association” between services and place raises inference of materiality

11

COLORADO STEAKHOUSE: §2(e)(3) Refusal Upheld

Evidence that Colorado is “known for its steaks” Gazetteer, geographic dictionary information USDA report that Colo. is a leading cattle producer Internet and Nexis® excerpts

• Restaurant reviews in and out of Colo. discussing “Colorado steaks” as featured menu items

• Stories of Colo. politicians wagering “Colorado steaks” against other politicians’ home states’ products, e.g., Wisconsin cheese, Florida Key Lime pie

12

LE MARAIS:§2(e)(3) Refusal Vacated

Services-place association and materiality standards not met Evidence: Online articles and travel brochures that

Le Marais is a Paris neighborhood with fine restaurants

Insufficient to show “heightened association” between restaurants and Le Marais neighborhood

LE MARAIS “conjures up only memories or images” of Paris neighborhood

Record insufficient to show that diner at restaurant in New York City would identify Paris neighborhood as source of services

13

Evidence for Restaurants

Must show consumer would believe thatFood comes from place; orChef received special training in place; orMenu is identical to known menu from

place

14

Approve for pub if otherwise in condition

Issue non-final action under §2(e)(3) and §2(a) with evidence (e.g., Form Paragraph Q32-16)

If use not claimed prior to 12/8/93, withdraw §2(a) and issue Final Action under §2(e)(3) only*

If use claimed prior to 12/8/93 and applicant amends to Supp or §2(f), withdraw §2(e)(3) and issue Final Action under §2(a) only*

Record is Clear: Neither applicant nor goods/services come from place

Is the geographic misrepresentation material?

Does response to OA obviate refusals?

No

Yes

Yes

No

* Practice Tip *In final action, indicate

status of withdrawn refusal

15

Record is Unclear: Applicant does not come from place named and no indication that goods/services “originate” there

If record is unclear where goods/services

originate, examining attorney must

determine where they originate

16

Is contact with theApplicant possible? E.g., • Entire mark not

subject to §2(e)(2) refusal, thus disclaimer of geographically descriptive term may be appropriate;

• No other refusals; and

• Examiner’s amendment will put in condition for publication

Ask applicant where goods/services originate

If from place named

Enter disclaimer or other relevant amendments by examiner’s amendment

If not from place named

Approve for pub

Issue refusals under §§2(e)(3) and 2(a)

Must also include info. request re: wheregoods/services originate

Record is Unclear: Applicant does not come from place named and no indication that goods/services originate there

Yes

No

See next slide

Enter note to file that goods/services do not come from place

Is geographic misdescription material?

Yes

No

17

Record is Unclear: Applicant does not come from place named and no indication that goods/services originate there

Direct contact with applicant notpossible, e.g.,• Unable to reach applicant;• Applicant uncertain where

goods/services originate; or• Other refusals or

requirements require written Office action

Issue following refusals (with supporting evidence) and requirements:

1. §2(e)(2) refusal (or disclaimer requirement as appropriate)

2. If misdescription is material, §2(e)(3)/2(a) refusal in the alternative

3. Rule 2.61(b) information request asking where goods/services originate

4. Other relevant refusals/requirements

18

Identifications

IDs never need to be amended to indicate that goods/services do or do not come from geographic placeContrast with §2(a) deceptiveness

refusals, where refusal may be obviated by amending ID to indicate material composition of goods

19

Composite Marks

Evaluate significance of mark as a whole May consider significance of each element

Examples PARIS BEACH CLUB CUBA L.A. NEW YORK WAYS GALLERY YBOR GOLD

20

Composite Marks

Must consult Managing or Senior Attorney if you determine that primary significance is not geographic Note to File recommended

• Facts only (e.g., “Discussed geographic significance of mark with Senior Attorney”)

• No legal opinions or conclusions

21

Practice Tips

Notes to File Useful for listing info. obtained from applicant,

resources checked, consultation with Managing or Senior Attorney, etc.

Rule 2.61(b) Information Request Include in written actions to clarify facts for the

record In subsequent actions, including finals,

indicate status of any withdrawn §2(a) or §2(e)(3) refusal

22

Resources 15 U.S.C. §1052(a) and §1052(e)(3) TMEP §§1210.05 et seq. (Geographically

Deceptive Marks) 37 C.F.R. §2.61(b) Examination Guide 02-09 and cases cited

therein Additional cases:

• In re Broyhill Furniture Industries, 60 USPQ2d 1511 (TTAB 2001)(affirmed §2(e)(3) refusal for TOSCANA used on furniture from North Carolina)

• In re Narada Productions, Inc., 57 USPQ2d 1801 (TTAB 2001) (affirmed §2(e)(3) refusal for CUBA L.A. used in connection with prerecorded music and related services)

TQR page on PTO Intranet