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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

Section 2(e)(3) trademark refusal is issued if the USPTO examiner considers the mark to be geographically deceptively misdescriptive. For example, a brand called True Tuscan might be considered geographically deceptively misdescriptive if the goods are not manufactured in the region of Tuscany in Italy.

Not every brand containing a geographical term will be refused registration. Before delving into options to overcome this type of office action, we have to look at the criteria for its issuing. A mark is deemed geographically deceptively misdescriptive if:

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 originate in the said location; for example, if the geographical area is known for producing the given goods/services,
This misrepresentation is likely to have a substantial influence on purchasing decisions.

To overcome a Section 2(e)(3) refusal, you'd have to challenge one of these points except point two - if you could prove your goods originate in the said location, that would still leave you with a Section 2(e)(2) refusal, this time for being "primarily geographically descriptive."

You can still build a legal case around one or more of the remaining three points, but generally speaking, it's challenging. Therefore, seeking the help of a qualified trademark attorney is highly recommended.

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