E9-16424. Trademark Examination Guides 01-09 and 02-09 on Deceptiveness Refusals

AGENCY:

United States Patent and Trademark Office, Commerce.

ACTION:

Notice

SUMMARY:

The United States Patent and Trademark Office (“USPTO” or “Office”) is publishing two Trademark Examination Guides (“Guides”) regarding deceptiveness refusals for non-geographic and geographic marks. These Guides, issued on May 11, 2009, are being published to give members of the public notice of them in addition to the notice already provided on the USPTO's Web site. Members of the public may submit comments regarding the Guides. Comments will be given consideration in connection with developing future examination guidance dealing with the subjects of the Guides.

ADDRESSES:

The Office prefers that any comments be submitted via electronic mail message to [e-mail]. Written comments may also be submitted by mail addressed to: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451, marked to the attention of Cynthia C. Lynch; or by hand delivery to the Trademark Assistance Center, Concourse Level, James Madison Building—East Wing, 600 Dulany Street, Alexandria, Virginia, marked to the attention of Cynthia C. Lynch.

The comments will be available for public inspection on the Office's Web site at http://www.uspto.gov and will also be available at the Office of the Commissioner for Trademarks, Madison East, Tenth Floor, 600 Dulany Street, Alexandria, Virginia. Because comments will be made available for public inspection, information that is not desired to be made public, such as an address or phone number, should not be included in the comments.

FOR FURTHER INFORMATION CONTACT:

Cynthia C. Lynch, Office of the Deputy Commissioner for Trademark Examination Policy, by electronic mail at: [e-mail]; or by mail addressed to: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451, marked to the attention of Cynthia C. Lynch.

SUPPLEMENTARY INFORMATION:

On May 11, 2009, the Office issued Examination Guides 01-09 and 02-09 regarding examination procedures for marks that may be deceptive under either section 2(a) or section 2(e)(3). Section 2(a) of the Trademark Act, 15 U.S.C. 1052(a), prohibits, inter alia, the registration of deceptive matter. Section 2(e)(3) of the Trademark Act, 15 U.S.C. 1052(e)(3), prohibits the registration of primarily geographically deceptively misdescriptive marks. Each Guide reviews and discusses case law regarding: (1) The elements of the refusal; (2) evidentiary issues with respect to the refusal; and (3) procedures for issuing refusals. The Guides may be found on the Office's Web site at: http://www.uspto.gov/​web/​offices/​tac/​notices/​notices.htm.

The purpose of these Guides is to promote consistency in examination and to provide guidance to examining attorneys regarding when deceptiveness refusals must be issued. These Guides do not constitute substantive rulemaking and hence do not have the force and effect of law. They have been developed as a matter of internal Office management and are not intended to create any right or benefit, substantive or procedural, enforceable by any party against the Office. To the extent that earlier guidance from the Office, including certain sections of the Trademark Manual of Examining Procedure (TMEP), 5th edition, is inconsistent with the guidance set forth in the Guides, Office personnel are to follow the Guides. The next revision of the TMEP will be updated accordingly.

Any member of the public may submit written comments on either or both of the Guides. The Office will consider any comments received in connection with developing future examination guidance dealing with the subjects of the Guides. Persons submitting comments should note that the USPTO does not plan to provide a response to or analysis of any comments, as these Guides are not notices of proposed rulemaking.

Dated: July 6, 2009.

John J. Doll,

Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office.