How can I overcome a Section 2(e)(3) refusal of my trademark application?

Photo of Jan Buza

Written by Jan Buza

Co-founder of Trama

Section 2(e)(3) trademark refusal is issued if the USPTO examiner considers the mark to be geographically deceptively misdescriptive. For example, a brand called True Tuscan might be considered geographically deceptively misdescriptive if the goods are not manufactured in the region of Tuscany in Italy.

Not every brand containing a geographical term will be refused registration. Before delving into options to overcome this type of office action, we have to look at the criteria for its issuing. A mark is deemed geographically deceptively misdescriptive if:

  • The term identifying an actual geographical location is of primary significance within the mark,
  • The goods or services do not originate in the said location,
  • Purchasers would be likely to believe the goods or services originate in the said location; for example, if the geographical area is known for producing the given goods/services,
  • This misrepresentation is likely to have a substantial influence on purchasing decisions.

To overcome a Section 2(e)(3) refusal, you'd have to challenge one of these points except point two - if you could prove your goods originate in the said location, that would still leave you with a Section 2(e)(2) refusal, this time for being "primarily geographically descriptive."

You can still build a legal case around one or more of the remaining three points, but generally speaking, it's challenging. Therefore, seeking the help of a qualified trademark attorney is highly recommended.

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