Last Thursday, the U.S. Court of Appeals for the Federal Circuit affirmed a decision of the Trademark Trial and Appeal Board refusing to register the logo “JPK PARIS 75” for handbags as a trademark because it was primarily geographically deceptively misdescriptive under 15 USC 1052(e)(3). See Published Opinion. According to the Federal Circuit, a mark is primarily geographically deceptively misdescriptive—and barred from registration—if:
- the primary significance of the mark is a generally known geographic location;
- the consuming public is likely to believe the place identified by the mark indicates the origin of the goods bearing the mark, when in fact the goods do not come from that place; and
- the misrepresentation was a material factor in the consumer’s decision to purchase the goods.
In this case, the bags in question were designed in Miami and made in Asia. With respect to the question of origin, the Court noted:
It is undisputed that Paris is famous for fashion and fashion accessories, including the types of goods identified in the application. Because relevant purchasers are likely to think of Paris as a known source for fashion accessories, we agree with the Board that there is sufficient evidence of a goods/place association between Paris and the goods listed.
The applicant argued that while its bags were not made or designed in Paris, they nevertheless “originated” there because they were designed by a man who had lived and worked in Paris for over twenty years. In rejecting this argument, the CAFC said the focus should be the connection between the bags and Paris, not between the designer and Paris. In this case, the handbags were not designed while in Paris or exhibited at Parisian trade shows. The Court noted that while it was not endorsing a rule that goods must always be manufactured in the named place to “originate” there, there must be some “direct connection” between the goods and the place identified in the mark. Here, “there [was] no evidence of a current connection between the goods and Paris.” In finding deception, the CAFC relied on an inference of materiality for goods associated with a famous place for those goods, and distinguished case law that required a heightened standard to show an association between service marks and a geographic location. Case: In re Miracle Tuesday, LLC, Case No. 2011-1373 (Fed. Cir.)