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

Written by Jan Buza

Co-founder of Trama

A Section 2(e)(3) refusal is among the most difficult to overcome. The two main grounds to argue are that the geographic term is not of primary significance in the mark, or that the connection between the term and the goods is not material to consumers.

On primary significance: if the geographic term has a well-established meaning in a non-geographic context in the relevant trade (for example, a place name that is also a common surname or has an independent commercial meaning), argue that consumers would not primarily read it as a geographic indicator.

On materiality: the refusal requires not only that the geographic origin is falsely implied but that the origin would be material to the purchasing decision. If consumers of the relevant goods are not meaningfully influenced by the claimed geographic origin, the materiality element may be arguable.

Unlike Section 2(e)(2), acquired distinctiveness cannot overcome a Section 2(e)(3) refusal. If the mark is genuinely geographically deceptively misdescriptive, the practical resolution is to remove or modify the geographic element.

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