TMEP § 1210.05(b)
Accordingly, the elements of a refusal under Trademark Act §2(e)(3) are as follows:
See In re Miracle Tuesday LLC, 695 F.3d 1339, 1343, 1346-47 (Fed. Cir. 2012); In re Spirits Int’l, N.V., 563 F.3d 1347, 1350–51, 1353-56 (Fed. Cir. 2009); In re Cal. Innovations Inc., 329 F.3d 1334, 1336-37, 1341 (Fed. Cir. 2003).
The determination of whether the primary significance of the mark is a generally known geographic location can be made "by showing that the mark in question consists of or incorporates a term that denotes a geographical location which is neither obscure nor remote." In re Sharky's Drygoods Co., Ser. No. 74017286, 1992 TTAB LEXIS 67, at *1-2 (1992). See TMEP §1210.06 regarding procedures for examining geographic composite marks and §1210.06(b) regarding primarily geographically deceptively misdescriptive and deceptive composites. Thus, the focus is on whether the term in question is primarily geographic in the context of the mark, rather than on whether the geographic reference dominates the mark.
Often, the record is clear that neither the applicant nor the goods and/or services originate from the place named in the mark. In other cases, although the applicant may not come from the place named, it is not clear whether the goods and/or service originate in that place. In either situation, after determining that the primary significance of the mark is a generally known geographic location, and that there is a goods/place or services/place association such that the public is likely to believe that the goods or services originate in the place identified in the mark, the examining attorney must then determine whether a geographically deceptively misdescriptive refusal would be warranted. At this point, the assessment turns on materiality – that is, whether a known or possible misdescription in the mark would affect a substantial portion of the relevant consumers’ decision to purchase the goods/services.
When the place named in the mark is in a foreign language and the examining attorney determines that the doctrine of foreign equivalents applies, the requirement that a substantial portion of the relevant consuming public would likely be deceived requires a separate determination. In re Spirits Int’l, N.V., 563 F.3d at 1352, 1356-57 ("Once the [foreign] word or phrase is translated, its impact must be ‘material’ under subsection [2](e)(3)."); see TMEP §1207.01(b)(vi) for information about the doctrine of foreign equivalents and when it applies. The examining attorney must determine whether "a substantial portion" of the intended audience would be materially deceived, that is, whether consumers who speak the foreign language could constitute a substantial portion of the relevant consumers. In re Spirits Int’l, N.V., 563 F.3d at 1353, 1357; see Corporacion Habanos, S.A. v. Guantanamera Cigars Co., Opp. No. 91152248, 2012 TTAB LEXIS 41, at *30-32 (2012) (finding persons who speak or know Spanish are a substantial portion of the intended audience). Use of a non-English language mark can be evidence that the product in question is targeted at the community of those who understand the language. In re Spirits Int’l, N.V., 563 F.3d at 1356 (citing 1 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §11:35 (5th ed. 2023 & Supp. 2025)).
For information regarding the doctrine of foreign equivalents in other contexts, see TMEP §§1207.01(b)(vi)(A)-(b)(vi)(B) for likelihood of confusion, §1209.03(g) for descriptiveness or genericness, §1210.10 for geographic significance, and §1211.01(a)(vii) for surnames.