Where Your Goods Come From Decides a Place-Name Refusal Under Section 2(e)(2) or 2(e)(3)

You are in this situation if your mark names a place your goods don't come from (a foreign city, an island, a region known for a product), or a place your company built and named, and the Office action refuses it as geographically descriptive (Section 2(e)(2)), as geographically deceptive (Sections 2(a) and 2(e)(3)), or both in the alternative. It may also demand a statement of whether your goods are made, packaged, shipped from or sold in the place.

Before you argue

Answer the origin question first: your answer decides which refusal you are left with. When the record does not show where the goods come from, the manual tells the examiner to refuse under Section 2(e)(2) on the presumption that they come from the place, and also to "Issue alternative refusals, supported by evidence, under §§2(a) and 2(e)(3) as geographically deceptively misdescriptive, based on the alternative presumption that the goods do not come from the place named" (TMEP 1210.05(d)(ii)). Your statement removes one of the two, and letters like CAPITOLA's second letter warn that "Failure to comply with a requirement for information is an independent ground for refusing registration."

The third row is the trap. PARIS for shirts was first refused as geographically descriptive. Asked where the shirts come from, the applicant answered that "The blank T-shirts are sourced from U.S.-based suppliers". The next letter refused the mark under Sections 2(a) and 2(e)(3) "because Paris is a well-known, world-famous fashion center."

From there the usual exits are shut: "a disclaimer of the geographic matter will not overcome a §2(e)(3) refusal, even if the mark was in use prior to December 8, 1993" (TMEP 1210.06(b)); a 2(f) claim fails "unless the mark became distinctive of the goods or services in commerce before December 8, 1993" (TMEP 1210.07(b)); and the Supplemental Register is closed "unless the mark has been in lawful use in commerce since before December 8, 1993" (TMEP 1210.07(a)).

If your goods do come from the place, the refusal is an ordinary 2(e)(2) one: our article on your own city, state or region in the name covers its routes, the 2(f) playbook covers acquired distinctiveness, and the Supplemental Register (a second-tier register for descriptive marks) is the fallback, not a strategy.

If you decide to argue: four routes built on facts about the place and your goods

Section 2(e)(3) needs four things, and two are facts about you and your buyers: "(2) the goods or services do not originate in the place identified in the mark" and "(4) the misrepresentation is a material factor in a substantial portion of the relevant consumer’s decision to buy the goods or use the services" (TMEP 1210.01(b)). Section 2(e)(2) needs the opposite fact, goods that do come from the place (TMEP 1210.01(a)).

Whichever you choose, attach the labels, web pages and declarations you rely on. A description of them typed into the response does not count as evidence.

1. The place is a theme, not your source (TMEP 1210.03 and 1210.05(c)(i))

The rule: "Goods and services do not always originate in the applicant’s place of business" (TMEP 1210.03). When they don't, the deception still has to matter: "If the evidence shows that the geographical area named in the mark is sufficiently known to lead purchasers to make a goods/place association, but the record does not show that the relevant goods are a principal product of that geographical area, the deception will most likely be found not to be material" (TMEP 1210.05(c)(i)).

When it fits: the place is your theme, the examiner presumed your goods come from there, and the place is not known for what you sell.

What to file: a direct answer to the origin question (where the goods are made, packaged, shipped from and sold), plus your website, menus and reviews if they show where you operate. First check whether the place is known for your kind of goods: that is what turns the same answer into a 2(e)(3) refusal.

In their words. CAPITOLA's second response: "The applied-for goods are not manufactured, packaged, shipped from, or sold in Capitola, California." The final refusal that answered SEOUL KIMCHI: "For that reason, the Section 2(e)(2) Refusal has been withdrawn. However, the refusal under Trademark Act Sections 2(a) and 2(e)(3) is now made FINAL."

The pattern: all four answered that their goods do not come from the place. The approved files named places the examiner's evidence did not tie to the goods: it said nothing about rugs in Capitola, and showed only drinks and food inspired by Zanzibar. The refused files named places the evidence showed are known for the goods: Paris for fashion, Seoul and Korea for kimchi.

2. Your goods do come from the place (TMEP 1210.03)

The rule: goods come from a place if "they are manufactured, produced, or sold there", and "a product might be found to originate from a place if the main component or ingredient is made in that place" (TMEP 1210.03). Once that is shown, what is left is an ordinary 2(e)(2) question: the place can be disclaimed if the rest of the mark is distinctive (TMEP 1210.06(a)).

When it fits: the letter refuses under Section 2(e)(3), alone or in the alternative, but your goods or their main ingredient really come from the place.

What to file: a statement or declaration from someone who knows where the goods are grown, made, packed and shipped; the label if it names the origin; then the disclaimer the examiner asks for.

In their words. STUDIO ITALIANO's next letter: "Because applicant's goods have a connection with Italy, the Sections 2(e)(2), 2(a) and 2(e)(3) refusals have been obviated." UPALA CHOCOLATE's statement: "The cacao used in the production of the applicant's chocolate is cultivated in the Canton of UPALA, Costa Rica."

The pattern: in all three files the deceptiveness refusal ended after the origin statement, and the rest of the mark decided what followed. STUDIO ITALIANO and UPALA CHOCOLATE had wording or a design to keep, so the place was disclaimed; SAIGON BEST had only the praise word BEST beside the place, and the 2(e)(2) refusal stood.

3. Take the goods change the letter offers (TMEP 1210.05(c)(i))

The rule: a 2(e)(3) refusal of goods rests on what the place is known for: "If, however, there is evidence that the relevant goods, or related goods, are a principal product of the geographical area named by the mark, then the deception will most likely be found to be material" (TMEP 1210.05(c)(i)). In these files the examiner wrote the cure into the letter: drop the goods the place is known for, or limit them to goods connected with it.

When it fits: the letter names an amended goods list that is accurate for what you sell.

What to file: the amended goods list in the letter's own wording, any disclaimer it asks for, and, if you want, a short argument in the alternative.

In their words. PURO CUBANO's letter, on why plain cigars would not do: "Because Cuba is famous for its tobacco products, consumers will believe the tobacco goods originate from the geographic location identified in the mark."

The pattern: all three registered after taking the change their letters offered. PROVENCE dropped the goods Provence was shown to be known for and reached the Principal Register. PURO CUBANO and CUBANA TABACO limited their goods to Cuban-seed tobacco, which left the place word to deal with: disclaimed beside PURO on the Principal Register, while CUBANA TABACO, with only the word for tobacco beside the place, went to the Supplemental Register.

4. You created and named the place (TMEP 1210.02(a))

The rule: being on a map is not enough: "names of amusement parks, residential communities, and business complexes which are coined by the applicant, must not be refused" (TMEP 1210.02(a)).

When it fits: the map took the name from your project: a resort, park, planned community or shopping center that you or a predecessor built and named.

What to file: the naming history (articles, founding records) showing the name started with you; your registrations of the name; a disclaimer of the generic words.

In their words. CAMP SEASIDE: "SEASIDE is the coined name for Applicant’s planned community and thus is not a geographic location within the scope of 15 U.S.C. § 1052(e)(2)." The final refusal that answered NORTHGATE STATION: "NORTHGATE STATION originally identified a landmark (transit center), but the name was appropriated by applicant".

The pattern: the approved files showed that the place took its name from the applicant's own project (a planned community, a 1992 development) and added the applicant's registrations of the name. NORTHGATE's history covered the word NORTHGATE, but the examiner found that the full name applied for had named a transit center before the shopping center took it.

Arguments that rarely carried a case alone

Under Section 2(e)(3), the exits that work for descriptive marks did not work in these files. PARIS argued that its Art Deco lettering made the word evocative and disclaimed PARIS; the final refusal answered that "Disclaiming the primarily geographically deceptively misdescriptive word or term in a mark will not obviate a primarily geographically deceptively misdescriptive refusal." SEOUL KIMCHI claimed acquired distinctiveness on sales going back to 2002, then authorized the examiner to withdraw the claim before the final refusal.

Finding cases like yours

GleanMark's Office Action research (Professional and Max plans) lets you select the "§2(e)(2) Geographic" or "§2(e)(3) Deceptive Geographic" refusal and open real cases with the same refusal, each with its Office Action, response and outcome.

This article describes public USPTO records. It is not legal advice; each refusal turns on its own mark, goods and evidence.