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

Photo of Igor Demcak

Written by Igor Demcak

Founder & Trademark Attorney

If you've received a Section 2(e)(2) refusal, it means the examiner considers your mark to be primarily geographically descriptive of the origin of your goods and services.

Before delving into strategies to overcome this office action, we must look at its issuing criteria. A mark is deemed primarily geographically descriptive if:

  • The term identifying an actual geographical location is of primary significance within the mark,
  • The goods/services provided originate in the said location,
  • Purchasers would be likely to believe the goods/services originate in the said location (for example, if it's known for producing them).

To overcome a Section 2(e)(2) dismissal, you would have to challenge the first and/or the third point mentioned above. You can point to other distinct elements within the mark, prove there is no significant association between the location and your goods/services or provide consumer surveys showing that consumers are not likely to be deceived by the geographic term.

Alternatively, you can amend the application and leave out the geographical element, if possible, or seek registration on the Supplemental Register.

If you received a Section 2(e)(2) refusal, it's advisable to consult a trademark attorney who can go through your options with you and advise on the best course of action.

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