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Goods/Place Association for Geographic Descriptiveness

Posted by James Juo | Apr 10, 2023 | 0 Comments

Whether a term is primarily geographically descriptive depends on (1) the primary significance of the term in the mark sought to be registered is the name of a place generally known to the public; (2) the public would make an association between the goods or services and the place named in the mark, that is, believe that the goods or 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. In re Newbridge Cutlery Co., 776 F.3d 854, 113 USPQ2d 1445, 1448-49 (Fed. Cir. 2015) (citing In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450, 1452 (Fed. Cir. 1987) (“Vittel”) (elements 1 and 2) (additional citations omitted); In re Jacques Bernier, Inc., 894 F.2d 389, 13 USPQ2d 1725, 1726 (Fed. Cir. 1990) (element 3) (discussing Section 2(e)(2) elements) (additional citation omitted)).

The relevant public is the purchasing public, located in the United States, of the specific types of goods and services being offered by Applicant. In re Newbridge Cutlery, 113 USPQ2d at 1449; see also In re Loew's Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985) (DURANGO in Mexico would be recognized by “the Mexican population of this country” as primarily geographically deceptively misdescriptive of chewing tobacco not grown in Durango); Institut Nat'l des Appellations D'Origine v. Vintners Int'l Co., Inc., 958 F.2d 1574, 1580, 22 USPQ2d 1190, 1195 (Fed. Cir. 1992) (finding evidence showing that Chablis is the name of a region in France insufficient to establish that CHABLIS WITH A TWIST is geographically deceptive of wine under §2(a), where evidence showed that the term “Chablis” would be perceived by consumers in the United States as the generic name for a type of wine with the general characteristics of French chablis).

To establish a goods/place (or services/place) association required by the second element of the test, there must be “a reasonable predicate for its conclusion that the public would be likely to make the particular goods/place association on which it relies.” In re Newbridge Cutlery, 113 USPQ2d at 1449 (citing In re Miracle Tuesday, 695 F.3d 1339, 104 USPQ2d 1330, 1334 (Fed. Cir. 2012) (internal citations omitted)); see also In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1748(TTAB 2016) (“While there is no doubt that the term SEATTLE identifies a generally known geographic location, as it is used in the context of [a]pplicant's mark, we do not find that the relevant public would consider it to indicate of the origin of the goods”); In re Int'l Taste Inc., 53 USPQ2d 1604, 1605–06 (TTAB 2000) (finding doubt as to the primary significance of HOLLYWOOD because of other prominent, significant meaning of HOLLYWOOD as referring to the entertainment industry in general, with the doubt resolved in favor of the applicant).

“The PTO has long held that where: (1) a location is generally known; (2) the term's geographic significance is its primary significance; and (3) the goods do, in fact, originate from the named location, a goods/place association can be presumed.” In re Newbridge Cutlery, 113 USPQ2d at 1449 (citations omitted).

Maps, Gazetteer Entries, and Internet Websites

The fact that a place may appear on maps is not necessarily persuasive evidence that a geographic location is generally known, given the multiple geographic locations, large and small, that appear on maps. In re Fredericia Furniture A/S, Ser. Nos. 79310559 and 79318824 (TTAB Apr. 3, 2023) (not precedential). But cf. In re Newbridge Cutlery, 776 F.3d at 863, 113 USPQ2d at 1451 (“That Newbridge, Ireland, is not generally known is supported by the fact that certain maps and atlases do not include it.”).

Also, a description of the place on an Internet website does not necessarily evidence that a place is generally known to the relevant American consuming public. See In re Newbridge Cutlery, 776 F.3d at 863, 113 USPQ2d at 1450; see also TMEP § 1210.02(b).

To be clear, we do not foreclose the PTO from using gazetteer entries or internet websites to identify whether a location is generally known. (citation omitted). … Gazetteer entries and internet websites are valuable for the information they provide. But the mere entry in a gazetteer or the fact that a location is described on the internet does not necessarily evidence that a place is known generally to the relevant public. (citation omitted).

In re Newbridge Cutlery, 776 F.3d at 863, 113 USPQ2d at 1450-51.

The specifics of such evidence should show the extent to which relevant American consumers would be familiar with the location and its association with the identified goods. Otherwise, its probity may be limited.

Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.

About the Author

James Juo

James Juo is an experienced intellectual property attorney. He has successfully litigated various intellectual property disputes involving patents, trademarks, copyrights, and trade secrets. He also has counseled clients on the scope and validity of patent and trademark rights.


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