Section 2e2 Does Not Apply to Geographic Certification Marks Trademark Act

Section 2e2 does not apply to geographic

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registration of the applied-for mark. Section 2(e)(2) Does Not Apply to Geographic Certification Marks Trademark Act Section 2(e)(2) bars registration of primarily geographically descriptive marks, but specifically excludes from this prohibition those marks that serve as indications of regional origin.61Thus, when an applied-for certification mark consists of or includes a geographic designation that functions to certify regional origin, the examining attorney should not refuse registration or require a disclaimer on the basis that the designation is primarily geographically descriptive of the goods or services.62However, a requirement to disclaim other matter in the mark may be appropriate.63For instance, for the geographic certification mark WISCONSIN CHEESE, which certifies that cheese products originate in Wisconsin, a disclaimer of the generic term “CHEESE” is appropriate.646
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Geographically Deceptive Marks Not Registrable as Geographic Certification MarksAn applied-for geographic certification mark that is geographically deceptive may not be registered and must be refused under Trademark Act Section 2(e)(3) 65 or Section 2(a), 66 as appropriate. 67 See TMEP § 1210.05 regarding geographically deceptive marks. Treatment of Geographic Designations That Do Not Certify Regional Origin Sometimes, a geographic designation in a certification mark is not used to certify the geographic origin of the goods or services. Consider, for example, a certification mark that includes the word “California” and is used to certify that the fruits and vegetables to which it is applied are organically grown. The word “California” may or may not describe the geographic origin of the goods, but, in this instance, it is not being used to certify that the goods originate in California. If a geographic designation in a certification mark is primarily geographically descriptive of the goods or services, and the certification mark’s purpose, as indicated by the certification statement, is to certify something other than geographic origin, the examining attorney must refuse under Trademark Act Section 2(e)(2) 68 or require a disclaimer, as appropriate. 69 If a geographic designation in a non-geographic certification mark is geographically deceptive as applied to the goods or services, the mark must be refused under Section 2(e)(3) 70 or Section 2(a), 71 as appropriate. 72 See TMEP §§ 1210-1210.07(b) for information on refusals under Sections 2(a), 2(e)(2), and 2(e)(3), including when it is appropriate to issue refusals in the alternative. Likelihood-of-Confusion Search and Analysis When comparing marks in a typical Section 2(d) likelihood-of-confusion analysis, terms that are geographically descriptive of the relevant goods or services are sometimes given less weight. 73 However, as indicated in Part II.D , a registered certification mark containing a geographic designation that functions to certify regional origin is not considered geographically descriptive. 74 Rather, it is treated as if it is distinctive because it serves to designate and certify the particular geographic origin of the relevant goods or services.
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