A term is primarily geographically descriptive under Section 2(e)(2) when (1) the primary significance of the term is a place generally known to the public, (2) the public would make an association between the identified goods or services and the place named in the mark, that is, believe that the goods of services for which the mark is sought to be registered originate in that place, and (3) the source of the goods or services is the geographic region named in the mark.
If there is no question that the geographic significance of the term is its primary significance and the place is neither obscure nor remote, a public association of the goods or services with the place may be presumed if, in fact, the goods or services originate from the geographic place named in the mark.
The addition of highly descriptive matter to a geographically descriptive term does not detract from the primarily geographically descriptive significance of the mark as a whole.
The Board first found that AMERICA is the name of a place known generally to the American public that is neither obscure nor remote. The primary significance of “America” is a geographic location. Applicant conceded the descriptiveness of “America” by disclaiming the word.
The combination of the highly descriptive term SE VENDE FOR SALE with the geographic term AMERICA does not detract from the primary geographic significance of the composite mark.
Applicant’s address is in Las Vegas, Nevada. Therefore the Board presumes that the public would make an associate between applicant’s services and the place named in the mark: that is, they would believe that the services originate in America.
And so the Board affirmed the refusal to register.
In his brief, applicant requested that he be allowed to amend his application to seek registration on the Supplemental Register if the Board upheld the Section 2(e)(2) refusal. Too late, said the Board. The Board has no power to re-open an application to propose such an amendment. See Rule 2.142(b) (An application which has been considered and decided on appeal will not be reopened except for the entry of a disclaimer … or upon order of the Director”).
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Text Copyright John L. Welch 2019.