Primarily Geographically Deceptively Misdescriptive



Pursuant to 15 U.S.C. §1052(e)(3), a mark that is primarily geographically deceptively misdescriptive of the goods or services cannot be registered on the Principal Regiser.

Prima facie refusal to register a mark as primarily geographically deceptively misdescriptive requires a showing that:

  1. (1) the primary significance of the mark is a generally known geographic location;
  2. (2) the goods or services do not originate in the place identified in the mark;
  3. (3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark; and
  4. (4) the misrepresentation is a material factor in the consumer's decision to buy the goods or use the services.

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  • The inclusion of a geographic term in a mark, and by seeking registration under Section 2(f) is a concession that the mark as a whole is geographically misdescriptive.
    • In re Beaverton Foods, Inc., Serial No. 76624790, (TTAB 2007).
      • Moreover, applicant does not dispute that NAPA VALLEY is a geographic term and, by seeking registration under Section 2(f), has conceded that the mark as a whole is geographically misdescriptive.
  • Test under Section 2(e)(3) for geographically deceptively misdescriptiveness.
    • In re Cheezwhse.com, Inc., Serial No. 78694122, (TTAB 2008).
      • We turn now to the Trademark Examining Attorney's alternative refusal under Trademark Act Section 2(e)(3) on the ground that applicant's mark is primarily geographically deceptively misdescriptive of applicant's goods. This refusal is proper if it is established that (1) the primary significance of the mark is the name of a generally-known geographic place, (2) the applicant's goods do not or will not originate in the place named, (3) purchasers would be likely to believe that the goods originate in the place named (i.e., that a goods/place association exists), and (4) the misrepresentation as to the geographic origin of the goods is or would be a material factor in the purchaser's decision to purchase the goods. See In re California Innovations Inc., 329 F.3d 1334, 66 USPQ2d 1853 (Fed. Cir. 2003); In re South Park Cigar Inc., supra.
  • The TTAB can presume, for purposes of Section 2(e)(3) refusal, that applicant's goods will not originate from the geographic location identified in the mark where applicant fails to comply to the Examining Attorney's attorney request for information regarding the geographic origin of the goods.
    • In re Cheezwhse.com, Inc., Serial No. 78694122, (TTAB 2008).
      • As noted above, applicant failed to comply with the Trademark Examining Attorney's Rule 2.61(b) requirement for information regarding the geographic origin of applicant's goods. In such circumstances, we deem it appropriate to presume, for purposes of this Section 2(e)(3) refusal (and in the alternative to our finding for purposes of the Section 2(e)(2) refusal), that applicant's cheese in fact will not originate in or from Normandy, France. The third element of the Section 2(e)(3) refusal therefore is established.
  • Applicant concedes its mark is primarily geographically misdescriptive when it amends the application for registration under Section 2(f) and admitting that the goods do not emanate from the geographic area stated in the mark.
    • In re Beaverton Foods, Inc., Serial No. 76624790, (TTAB 2007).
      • By its amendment to seek registration under Section 2(f) and its admission that the goods do not emanate from NAPA VALLEY, we may conclude that applicant has conceded that its mark is, at least, primarily geographically misdescriptive. Cf. Yamaha Int'l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988); In re Cabot Corp., 15 USPQ2d 1224, 1229 (TTAB 1990). However, by seeking registration under Section 2(f), applicant has not conceded that its mark is geographically deceptive under Section 2(a).
  • By seeking registration under Section 2(f), applicant has not conceded that its mark is geographically deceptive under Section 2(a).
    • In re Beaverton Foods, Inc., Serial No. 76624790, (TTAB 2007).
      • By its amendment to seek registration under Section 2(f) and its admission that the goods do not emanate from NAPA VALLEY, we may conclude that applicant has conceded that its mark is, at least, primarily geographically misdescriptive. Cf. Yamaha Int'l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988); In re Cabot Corp., 15 USPQ2d 1224, 1229 (TTAB 1990). However, by seeking registration under Section 2(f), applicant has not conceded that its mark is geographically deceptive under Section 2(a).
  • The purpose of the grandfather clause in Section 2(f) is to allow registration of primarily geographically deceptively misdescriptive marks that would have been eligible for registration under Section 2(f) prior to the NAFTA amendments.
    • In re Beaverton Foods, Inc., Serial No. 76624790, (TTAB 2007).
      • In short, the purpose of the grandfather clause in Section 2(f) is to allow registration of primarily geographically deceptively misdescriptive marks that would have been eligible for registration under Section 2(f) prior to the NAFTA amendments and not, as applicant's interpretation would have it, to provide a windfall to applicants seeking to register marks that prior to the NAFTA amendments would have been unregistrable under Section 2(a). Moreover, as noted above, a mark that was geographically deceptive prior to December 8, 1993 was not eligible for registration under Section 2(f) and thus cannot be covered by the grandfather clause.
  • Treatment of marks with geographic terms prior to NAFTA.
    • In re Beaverton Foods, Inc., Serial No. 76624790, (TTAB 2007).
      • We begin our analysis with a brief review of how the USPTO has treated marks with geographic terms. Prior to the implementation of NAFTA, with the consequent amendment of the Lanham Act to place the refusal of primarily geographically deceptively misdescriptive marks in Section 2(e)(3), rather than in Section 2(e)(2) along with primarily geographically descriptive marks, the USPTO recognized three categories of geographic marks: 1) primarily geographically descriptive, 2) primarily geographically deceptively misdescriptive, and 3) geographically deceptive. Marks falling in the first two categories were refused registration under section 2(e)(2) but were registrable upon a showing of acquired distinctiveness under Section 2(f). The test for determining whether a mark was primarily geographically descriptive or primarily geographically deceptively misdescriptive consisted of the following elements: the primary significance of the mark is a generally known geographic location; the goods or services do (for geographically descriptive marks) or do not (for geographically deceptively misdescriptive marks) originate in the place identified in the mark; and purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark. See In re California Pizza Kitchen Inc., 10 USPQ2d 1704, 1705 (TTAB 1988), citing In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450, 1452 (Fed. Cir. 1987) (primarily geographically descriptive); and In re Loew's Theatres, Inc., 769 F.2d 764, 226 USPQ 865, 867 (Fed. Cir. 1985) (primarily geographically deceptively misdescriptive). Marks falling in the geographically deceptive category were refused registration under Section 2(a) and were unregistrable, i.e., such marks were not eligible for registration under Section 2(f). The test for determining geographically deceptive marks mirrored the test for primarily geographically deceptively misdescriptive marks with the addition of the following element: the geographic misrepresentation is a material factor in the consumer's decision to buy the goods or use the services. See Institut National des Appellations D'Origine v. Vintners International Co. Inc., 958 F.2d 1574, 22 USPQ2d 1190, 1195 (Fed. Cir. 1992). See also In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694 (TTAB 1992). Thus, the test under Section 2(a) had the added element of materiality.
  • The NAFTA amendments assigned the same Section 2(a) proscription to registration of geographically deceptive marks to primarily geographically deceptively misdescriptive marks under Section 2(e)(3) and, thus, eliminated the ability of a primarily geographically deceptively misdescriptive mark to qualify for registration under Section 2(f).
    • In re Beaverton Foods, Inc., Serial No. 76624790, (TTAB 2007).
      • The NAFTA amendments assigned the same Section 2(a) proscription to registration of geographically deceptive marks to primarily geographically deceptively misdescriptive marks under Section 2(e)(3) and, thus, eliminated the ability of a primarily geographically deceptively misdescriptive mark to qualify for registration under Section 2(f).
  • The Court, recognizing the serious implications for a primarily geographically deceptively misdescriptive term, incorporated the test previously used under Section 2(a) into the test used under the newly created Section 2(e)(3) and included the materiality component for a refusal under Section 2(e)(3), making it more difficult for a mark to be refused registration on the basis that it is a primarily geographically deceptively misdescriptive term.
    • In re Beaverton Foods, Inc., Serial No. 76624790, (TTAB 2007).
      • The Court, in California Innovations, recognizing the serious implications for a primarily geographically deceptively misdescriptive term, incorporated the test previously used under Section 2(a) into the test used under the newly created Section 2(e)(3) and included the materiality component for a refusal under Section 2(e)(3), making it more difficult for a mark to be refused registration on the basis that it is a primarily geographically deceptively misdescriptive term.2
        FOOTNOTE 2 "By imposing the more rigorous test with its element of materiality, the Court has made fewer marks subject to a refusal under Section 2(e)(3) and thus, not only will there be fewer marks which otherwise would need to resort to the grandfather provision of Section 2(f) in order to be registrable, but more marks will be registrable simply because Section 2(e)(3) will be inapplicable. Those marks in which the geographic misdescriptiveness is not material to the purchasing decision, that prior to the NAFTA amendments would have been regarded as primarily geographically deceptively misdescriptive and thus would have required a showing of acquired distinctiveness for registration on the Principal Register, now no longer require such a showing in order to be registrable. If the materiality element cannot be supported, then a mark which otherwise would be primarily geographically deceptively misdescriptive is registrable on the Principal Register."
  • The fact that primarily geographically deceptively misdescriptive marks post-NAFTA are now the equivalent of geographically deceptive marks pre-NAFTA does not render registrable a mark that pre-NAFTA would have been refused as geographically deceptive under Section 2(a).
    • In re Beaverton Foods, Inc., Serial No. 76624790, (TTAB 2007)
      • Contrary to applicant's argument, we find that the Section 2(f) grandfather clause does not protect those "geographically deceptive" marks that would have been considered unregistrable under Section 2(a) prior to NAFTA. Rather, the grandfather clause is meant to provide a means for registering those marks that, prior to NAFTA implementation, could have been registrable under Section 2(f), i.e., primarily geographically deceptively misdescriptive marks where the geographic misdescriptiveness was not material to the purchasing decision. The fact that primarily geographically deceptively misdescriptive marks post-NAFTA are now the equivalent of geographically deceptive marks pre-NAFTA does not render registrable a mark that pre-NAFTA would have been refused as geographically deceptive under Section 2(a). The language of Section 2(f) clearly states that marks refused under Section 2(a) are not registrable under its provisions. The exception clearly applies only to pre-NAFTA "primarily geographically deceptively misdescriptive" marks, but not to pre-NAFTA "geographically deceptive" marks.
  • Case Finding: The Board noted that "unless the applicant is seeking registration ... on the Principal Register under Section 2(f) based on a claim that the mark had acquired distinctiveness prior to December 8, 1993, the proper refusal is under Section 2(e)(3), not Section 2(a).
    • In re Beaverton Foods, Inc., Serial No. 76624790, (TTAB 2007).
      • The Board recently discussed California Innovations in In re South Park Cigar Inc., 82 USPQ2d 1507 (TTAB 2007). The Board stated that "in keeping with the Court's instructions and its construction of the statute, we deem the appropriate refusal in this case involving an allegedly geographically deceptive mark to be only the Section 2(e)(3) ‘primarily geographically deceptively misdescriptive' refusal, and not the Section 2(a) deceptiveness refusal." Id. at 1509. The Board noted that "unless the applicant is seeking registration ... on the Principal Register under Section 2(f) based on a claim that the mark had acquired distinctiveness prior to December 8, 1993, the proper refusal is under Section 2(e)(3), not Section 2(a)..." Id. at 1509 n. 3.
  • A product may be found not to originate from a section or area of a metropolitan area if the record shows only that the applicant is located somewhere in the metropolitan area.
    • Corporacion Habanos, S.A. v. Anncas, Inc., Opposition No. 91165519 (TTAB 2008)
      • On the other hand, a product may be found not to originate from a section or area of a metropolitan area if the record shows only that the applicant is located somewhere in the metropolitan area. In re South Park Cigar Inc., 82 USPQ2d 1507 (TTAB 2007) [YBOR GOLD held primarily merely geographically misdescriptive of cigars and tobacco where the record showed that applicant was located somewhere in Tampa, Florida but not the Ybor City section of Tampa].
  • A product may be found to originate from a place, even though the product is manufactured elsewhere.
    • Corporacion Habanos, S.A. v. Anncas, Inc., Opposition No. 91165519 (TTAB 2008)
      • We turn then to the second issue in this element, that is, whether or not applicant's goods will originate or come from the place named in the mark. Of course, in view of the United States embargo on Cuban goods, applicant is barred from selling cigars made or manufactured in Cuba. See 31 C.F.R § 515.204. However, a product may be found to originate from a place, even though the product is manufactured elsewhere. See In re Nantucket Allserve Inc., 28 USPQ2d 1144 (TTAB 1993) [NANTUCKET NECTARS held 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].
  • A product might be found to originate from a place where the main component or ingredient was made in that place.
    • Corporacion Habanos, S.A. v. Anncas, Inc., Opposition No. 91165519 (TTAB 2008)
      • In addition, a product might be found to originate from a place where the main component or ingredient was made in that place. See In re Joint-Stock Company "Baik," 80 USPQ2d 1305 (TTAB 2006) [BAIKALSKAYA – the Russian equivalent of "from Baikal" or "Baikal's" – held 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 is made from the water of Lake Baikal].
  • Case Finding: Opposer has established that cigars are a principal product of Havana, and the desirability of cigars from Havana is well-known the world over. In view thereof, we find that the goods/place association created by applicant's mark with Havana undoubtedly would be material in a customer's decision to purchase applicant's cigars.
    • Corporacion Habanos, S.A. v. Anncas, Inc., Opposition No. 91165519 (TTAB 2008)
      • Opposer has established that cigars are a principal product of Havana, and the desirability of cigars from Havana is well-known the world over. In view thereof, we find that the goods/place association created by applicant's mark with Havana undoubtedly would be material in a customer's decision to purchase applicant's cigars.
  • Case Finding: The second element of the Section 2(e)(3) test has been satisfied, that is, the consuming public is likely to believe that Havana, Cuba indicates the origin of applicant's goods when in fact the goods will not come from that geographic location.
    • Corporacion Habanos, S.A. v. Anncas, Inc., Opposition No. 91165519 (TTAB 2008)
      • In view of the foregoing, the second element of the Section 2(e)(3) test has been satisfied, that is, the consuming public is likely to believe that Havana, Cuba indicates the origin of applicant's goods when in fact the goods will not come from that geographic location.
  • Case Finding: There is an insufficient connection between Cuban seed tobacco, which is descended from tobacco seeds taken from Cuba many decades ago, and Havana to support a finding that cigars made from Cuban seed tobacco come from or originate in Havana.
    • Corporacion Habanos, S.A. v. Anncas, Inc., Opposition No. 91165519 (TTAB 2008)
      • "We find that there is an insufficient connection between Cuban seed tobacco, which is descended from tobacco seeds taken from Cuba many decades ago, and Havana to support a finding that cigars made from Cuban seed tobacco come from or originate in Havana. This is particularly the case because the record in this case shows that cigars from Cuban seed tobacco share few, if any, qualities or characteristics of genuine or 100% Cuban cigars.

        In this case, the connection between applicant's intended goods and Havana is far too tenuous and is unlike the factual situations in Nantucket and In re Joint-Stock Company "Baik"."

  • Evidence: Applicant does not dispute that the primary significance of the mark HAVANA CLUB is a generally known location. Moreover, we note that opposer has shown from entries in The Columbia Gazetteer of North America (2000), The Britannica Encyclopedia Online, and ten English language dictionaries that "Havana" is the name of the largest city and chief port in the West Indies, and the political, economic, and cultural center of Cuba. We find therefore that opposer has established that Havana is a geographic location in Cuba and that Havana, Cuba is known to the relevant public.
    • Corporacion Habanos, S.A. v. Anncas, Inc., Opposition No. 91165519 (TTAB 2008)
      • Applicant does not dispute that the primary significance of the mark HAVANA CLUB is a generally known location. Moreover, we note that opposer has shown from entries in The Columbia Gazetteer of North America (2000), The Britannica Encyclopedia Online, and ten English language dictionaries that "Havana" is the name of the largest city and chief port in the West Indies, and the political, economic, and cultural center of Cuba. We find therefore that opposer has established that Havana is a geographic location in Cuba and that Havana, Cuba is known to the relevant public.
  • Examples of evidence establishing a goods/place association.
    • Corporacion Habanos, S.A. v. Anncas, Inc., Opposition No. 91165519 (TTAB 2008)
      • In any event, opposer's evidence establishes a goods/place association. Opposer submitted, inter alia, an entry for the word "Havana" taken from the Columbia Gazetteer (2000) which states that "local industries include … factories making the famous Havana cigars." Opposer's notice of reliance no. 2. In addition, the Encyclopedia Britannica Online entry on "Havana" identifies "tobacco production, particularly the worldfamous Havana cigars" as one of Havana's important industries. Opposer's notice of reliance no. 3. Further, several English language dictionary entries define "Havana" as both the capital of Cuba and as a cigar made in Cuba or made from Cuban tobacco. Opposer's notice of reliance no. 4. Also, in several news and feature stories and excerpts from cigar publications, "Havana" is used to denote a cigar made in Cuba. Opposer's notices of reliance nos. 5-10.
  • It has been USPTO practice to allow an applicant to overcome a Section 2(e)(3) refusal by amending its identification of goods and disclaiming the geographic term in the mark.
    • Corporacion Habanos, S.A. v. Anncas, Inc., Opposition No. 91165519 (TTAB 2008)
      • Second, to the extent that applicant argues that it has been the USPTO's practice to allow an applicant to overcome a Section 2(e)(3) refusal by amending its identification of goods from "cigars" to "cigars made from Cuban seed tobacco," and disclaiming the geographic term in the mark, such argument is not well taken. It cannot be said from the third-party registrations and applications submitted by applicant that this has been the policy of the USPTO. It may well be the practice of just a few examining attorneys.
  • It is well established that even if some prior registrations have some characteristics similar to applicant's, the USPTO's allowance of such prior registrations does not bind the TTAB.
    • Corporacion Habanos, S.A. v. Anncas, Inc., Opposition No. 91165519 (TTAB 2008)
      • In any event, it is well established that even if some prior registrations have some characteristics similar to applicant's, the USPTO's allowance of such prior registrations does not bind the Board. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
  • The elements of a Section 2(e)(3) claim are as follows: (1) the primary significance of the mark is a generally known geographic location; (2) the consuming public is likely to believe the place identified by the mark indicates the origin of the goods bearing the mark (i.e., that a goods/place association exists), when in fact the goods do not come from that place; and (3) the misrepresentation would be a material factor in the consumer's decision to purchase the goods.
    • Corporacion Habanos, S.A. v. Anncas, Inc., Opposition No. 91165519 (TTAB 2008)
      • The elements of a Section 2(e)(3) claim are as follows: (1) the primary significance of the mark is a generally known geographic location; (2) the consuming public is likely to believe the place identified by the mark indicates the origin of the goods bearing the mark (i.e., that a goods/place association exists), when in fact the goods do not come from that place; and (3) the misrepresentation would be a material factor in the consumer's decision to purchase the goods. California Innovations, supra, 329 F.3d at 1341, 66 USPQ2d at 1858.
  • The issue of the acceptability of the identification of goods is an examination issue.
    • Corporacion Habanos, S.A. v. Anncas, Inc., Opposition No. 91165519 (TTAB 2008)
      • The issue of whether "cigars made from Cuban seed tobacco" is an acceptable identification of goods is not before us and is not relevant to whether applicant's mark is primarily geographically deceptively misdescriptive under Section 2(e)(3). Indeed, such issue is an examination issue and our decision herein should not be construed as a holding one way or the other on this issue.
  • The second iss regarding what the consuming public is likely to believe the place identified by the mark indicates the origin of the goods bearing the mark when in fact the goods do not come from that place involves two issues: The first issue is whether there is a goods/place association; the second issue is whether or not applicant's goods in fact come from the place named.
    • Corporacion Habanos, S.A. v. Anncas, Inc., Opposition No. 91165519 (TTAB 2008)
      • "(2) The consuming public is likely to believe the place identified by the mark indicates the origin of the goods bearing the mark when in fact the goods do not come from that place.

        This element involves two issues. The first issue is whether there is a goods/place association; the second issue is whether or not applicant's goods in fact come from the place named."

  • The third element requires proof that the misleading goods/place association is a material factor in the customer's decision to purchase applicant's goods.
    • Corporacion Habanos, S.A. v. Anncas, Inc., Opposition No. 91165519 (TTAB 2008)
      • We turn then to the third and final element, which requires proof that the misleading goods/place association is a material factor in the customer's decision to purchase applicant's goods.
  • The TTAB need not consider a Section 2(a) claim in view of the Federal Circuit's pronouncement that it anticipates that the PTO will usually address geographically deceptive marks under subsection 2(e)(3) of the amended Lanham Act rather than subsection 2(a).
    • Corporacion Habanos, S.A. v. Anncas, Inc., Opposition No. 91165519 (TTAB 2008)
      • We need not consider opposer's Section 2(a) claim in view of the Federal Circuit's pronouncement that it "anticipates that the PTO will usually address geographically deceptive marks under subsection 2(e)(3) of the amended Lanham Act rather than subsection 2(a)." In re California Innovations Inc., 329 F.3d 1334, 66 USPQ2d 1853, 1856-57 (Fed. Cir. 2003). See also Corporacion Habanos S.A. v. Guantanamera Cigars Co., 86 USPQ2d 1473, 1475 (TTAB 2008) ["… we will give no further consideration to [opposer's] Section 2(a) claim, but consider the Section 2(e)(3) ground"].
  • Where Oopposer's Sections 2(e)(3) and 2(a) claims are not based on any ownership claim to a confiscated mark, and Section 211(b) has no applicability.
    • Corporacion Habanos, S.A. v. Anncas, Inc., Opposition No. 91165519 (TTAB 2008)
      • Here, opposer's Sections 2(e)(3) and 2(a) claims are not based on any ownership claim to a confiscated mark, and Section 211(b) has no applicability.
  • Where the primary significance of the mark is geographic, additional wording in the marks does not detract from the geographic meaning.
    • Corporacion Habanos, S.A. v. Anncas, Inc., Opposition No. 91165519 (TTAB 2008)
      • In addition, we find that the primary significance of the mark HAVANA CLUB is geographic. The word CLUB does not detract from the primary geographic significance of the mark. See, e.g., In re Wada, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999) [The mark NEW YORK WAYS GALLERY projects a primarily geographic significance and the addition of WAYS GALLERY to NEW YORK does not detract from the primary significance of the mark]; In re Boyd Gaming Corp., 57 USPQ2d 1944 (TTAB 2000) [The primary significance of the marks ROYAL HAVANA RESORT & CASINO and HAVANA RESORT AND CASINO is geographic, and the additional wording in the marks does not detract from the geographic meaning].
In re Cheezwhse.com, Inc., Serial No. 78694122, (TTAB 2008) Corporacion Habanos, S.A. v. Anncas, Inc., Opposition No. 91165519 (TTAB 2008) In re Beaverton Foods, Inc., Serial No. 76624790, (TTAB 2007) Grand Total
Corporacion Habanos S.A. v. Guantanamera Cigars Co., 86 USPQ2d 1473 (TTAB 2008) 1
California Innovations in In re South Park Cigar Inc., 82 USPQ2d 1507 (TTAB 2007) 1
In re South Park Cigar Inc., 82 USPQ2d 1507 (TTAB 2007) 2
In re Joint-Stock Company "Baik" 80 USPQ2d 1305 (TTAB 2006) 1
In re California Innovations Inc., 329 F.3d 1334, 66 USPQ2d 1853, (Fed. Cir. 2003) 2 3
In re Nett Designs Inc., 236 F.3d 133, 957 USPQ2d 1564 (Fed. Cir. 2001) 1
In re Boyd Gaming Corp., 57 USPQ2d 1944 (TTAB 2000) 1
In re Wada, 194 F.3d 1297, 52 USPQ 1539 (Fed. Cir. 1999) 1
In re Nantucket Allserve Inc., 28 USPQ2d 1144 (TTAB 1993) 1
In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694 (TTAB 1992) 1
Institut National Des Appellations D'Origine v. Vintners Int'l Co., 958 F.2d 1574, 22 USPQ2d 1190 (Fed. Cir. 1992) 1
In re Cabot Corp., 15 USPQ2d 1224 (TTAB 1990) 1
In re California Pizza Kitchen Inc., 10 USPQ2d 1704 (TTAB 1988) 1
Yamaha Int'l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988) 1
In re Societa Generale des Eaux Minerals de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987) 1
In re Loew's Theatres Inc., 749 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985) 1
Grand Total 2 9 8 19

Sec. 1052. Trademarks registrable on principal register; concurrent registration

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it--
  1. (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or 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 one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.
  2. (b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.
  3. (c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.
  4. (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the applications pending or of any registration issued under this chapter; (2) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or (3) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947. Use prior to the filing date of any pending application or a registration shall not be required when the owner of such application or registration consents to the grant of a concurrent registration to the applicant. Concurrent registrations may also be issued by the Director when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Director shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons.
  5. (e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional.
  6. (f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant's goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant's goods in commerce before December 8, 1993.
A mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be refused registration only pursuant to a proceeding brought under section 1063 of this title. A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be canceled pursuant to a proceeding brought under either section 1064 of this title or section 1092 of this title.