What does it mean if my trademark is dismissed for being geopraphically deceptively misdescriptive?

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Written by Tomas Orsula

Senior Trademark Attorney

If the USPTO issues a Section 2(e)(3) refusal based on your trademark being geographically deceptively misdescriptive, it means the examiner considers your mark to provide a false claim about the origin or characteristics of your goods or services. For example, a clothing brand called Paris Star might receive this office action if the goods are not associated with the city of Paris.

Here are the criteria for issuing this refusal:

  • 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 do, in fact, originate in the said location (for example, if the geographical area is known for producing the given goods/services, such as in our example of Paris and fashion),
  • This misrepresentation is likely to have a substantial influence on purchasing decisions.

This type of office action is especially difficult to overcome since even if, suppose, you could correct the USPTO and prove your goods or services originate in the location, that would lead the USPTO to issue another refusal based on Section 2(e)(2) for being Primarily Geographically Descriptive, i.e. being merely descriptive of the origin of goods or services provided.

Therefore, to overcome this office action, you would have to challenge one of the other criteria mentioned above. You can try arguing the mark contains other strong and distinct elements, proving there is no significant association between the location and your goods or services, or providing consumer surveys showing that buyers are not likely to be deceived by the geographic term. However, building a compelling legal argument for any of these is challenging and might require legal assistance.

If you received a Section 2(e)(3) 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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