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Is The Mark VENEZIA-MILANO Primarily Geographically Deceptively Misdescriptive?

In a recent July decision of the Trademark Trial and Appeal Board (“TTAB” or “Board”) a fashion company learned the hard way that registering a mark that has geographic significance can be an uphill battle. See In re Tigerland-Foxland of NY, Inc. Serial No. 85130889, July 23, 2014. Tigerland-Foxland of NY, Inc. (the “Applicant”) sought to register the mark VENEZIA-MILANO in standard characters for women’s clothing. The Examining Attorney refused the application on the basis that the trademark was geographically deceptively misdescriptive. The Applicant appealed to the Board. Regarding an evidentiary matter, the Applicant made a mistake in submitting third-party applications and not third-party registrations as supporting evidence. It is well settled law that the Board does not give probative value to pending trademark applications. Applications are evidence only of the fact that the application was filed with the USPTO. See In re Kent Pederson, 109 U.S.P.Q.2d 1185 (TTAB 2013).

Section 2(e)(3) of the Trademark Act states that a trademark is primarily geographically deceptively misdescriptive if:

(1)     The primary significance of the trademark is a generally known geographic area or region;

(2)     Applicant’s products or services do not originate in the generally known geographic location;

(3)     Consumers are likely to believe that Applicant’s goods or services originate in the known geographic location named in the mark; and

(4)     This misrepresentation is a material factor in the consumer’s decision making process when purchasing the goods or utilizing the services.

We discuss these four factors in detail on our web page entitled Geographic Indicators As Marks. You can also find additional information on this subject matter in the Trademark Manual Of Examining Procedure Section 1210.01(b). Applicant’s mark contains Italian words. Since Italian is a common language spoken in the United States, it is likely that U.S. consumers will translate the trademark into English. In recognition of this, Applicant has placed a translation statement in the record. The English translation is Venice-Milan. Venice and Milan are well known geographic locations in Italy. The Applicant unsuccessfully argued that since the term is hyphenated, consumers will read it as one location and there is no such place as Venice-Milan. The Board did not agree with this argument. The first requirement of this test is satisfied.

Regarding the second factor, this too is fulfilled. The Applicant’s goods are not made in Venice or Milan, or in any region of Italy. Applicant’s clothing is manufactured in China. The third factor requires that the place named in the trademark is known for producing the goods. This “goods/place association” is not a heavy burden, but in fact only requires that the Examining Attorney establish a reasonable basis for the conclusion that the public would be likely to associate the two. Here, the Board showed that Milan was the dominant portion of the mark. It further demonstrated that Milan has a strong connection with the fashion industry. This was evidenced through websites and blogs that referenced Milan as “The Fashion Capital Of The World”. It was not necessary to prove that Venice was also strongly associated with Fashion, but simply enough that it was another well-known tourist region of Italy. The Board was confident that consumers would make a goods/place association between VENEZIA-MILANO and the goods and mistakenly believe that the clothes were made in Italy.

All the factors must be satisfied for the mark to be found geographically deceptively misdescriptive. Therefore, the mistaken belief would have to be a material factor in a substantial portion of the consumers’ decisions to purchase the goods. The TTAB relied on the evidence produced by the Examining Attorney showing that Milan was famous for women’s apparel and concluded that consumers would be prompted to purchase the clothing believing it was made in Milan.

Applicant argued that it included a label on its goods that read: “China” and this would avoid any confusion or belief that the clothes came from Italy. The Board pointed to case law that conversely held that wording other than the trademark on the label will not negate the geographically deceptively misdescriptiveness conveyed by the trademark when encountered in the marketplace. The refusal to register the mark under Trademark Act §2(e)3 was affirmed. Applicants must use caution when including a geographic indicator in their trademark. The lawyers at our firm are familiar with the technical requirements of the Trademark Manual Of Examining Procedure. We would be happy to assist you with a trademark prosecution at the USPTO. Please feel free to contact us for a courtesy consultation.