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 Slonim Office 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 tobacco YBOR GOLD: Ybor City, Fla. famous for cigars NORMANDIE 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 that Food comes from place; or Chef received special training in place; or Menu 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 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 the Applicant 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: where goods/ 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 not possible, 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 place Contrast 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 §§ et seq. (Geographically Deceptive Marks) 37 C.F.R. §2.61(b) Examination Guide 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