Tuesday, March 19, 2013

TTABlog Collection of Section 2(e)(3) "Primarily Geographically Deceptively Misdescriptive" Cases

As a companion of sorts to the recent collection of Section 2(e)(2) cases, here is a collection of Section 2(e)(3) cases. Of course, most of the decisions are not precedential, but even non-precedential decisions may be helpful in framing effective arguments and locating precedential support for them.

There are four elements that must be met to invoke the bar of Section 2(e)(3): (1) The primary significance of the mark is a generally known geographic place; (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 substantial portion of the relevant consumer's decision to buy the goods or use the services. In re Spirits Int’l N.V., 563 F.3d 1347, 90 U.S.P.Q.2d 1489, 1490-95 (Fed. Cir. 2009); In re California Innovations, 329 F.3d 1334, 66 U.S.P.Q.2d 1853, 1858 (Fed. Cir. 2003).

Acquired distinctiveness may overcome a Section 2(e)(3) refusal, provided that the mark became distinctive prior to enactment of the NAFTA Implementation Act on December 8, 1993. See In re Boyd Gaming Corp., 57 U.S.P.Q.2d 1944, 1947 (T.T.A.B. 2000).

Marks found to be primarily geographically deceptively misdescriptive under Section 2(e)(3):

Marks found not to be primarily geographically deceptively misdescriptive under Section 2(e)(2):


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