Articles Tagged with Geographically Deceptively Misdescriptive Trademarks

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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.

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A recent decision from the TTAB (Trademark Trial and Appeal Board or the Board) provides us with further guidance in an area that can be fraught with subtleties in trademark law. See In re Nature’s Youth, Inc., Serial No. 85747419 (March 13,  2014) [not precedential]. Here, the Examining Attorney did not submit enough evidence into the record to support its decision of refusal of the trademark application. The Board found that there was insufficient proof on the prong of “materiality”.  The TTAB could not uphold a refusal to register the mark based on the mark  being primarily geographically and deceptively misdescriptive.

The Applicant in this case is Nature’s Youth Inc. and it filed a trademark application with the United States Patent & Trademark Office (USPTO) to register the mark NY for cosmetics, face creams, and lotions for cosmetic purposes. The Examining Attorney refused the application on three grounds: (1) the mark was geographically deceptive; (2) the mark was primarily geographically deceptively misdescriptive; and (3) failing to comply with a request for information concerning the goods. The Applicant appealed this decision.

women-make-up-1378868-mThe test for determining whether a mark is either geographically deceptive or primarily geographically deceptively misdescriptive is the same.  See TMEP 1210.05(b) for the elements of a §2(e)(3) refusal. The Examining Attorney must submit proof into the record to demonstrate four criteria. The first is that the primary significance or meaning of the mark is generally a known geographic place. The TTAB agreed with the Examining Attorney on this prong. The Board held that “consumers viewing applicant’s proposed mark NY on or in connection with the identified goods will understand this as an abbreviation for New York.” See In re Nature’s Youth, Inc., Serial No. 85747419 (March 13, 2014) [not precedential].  Although the Applicant submitted evidence to show that the term “NY” had different meaning other than New York, the meanings were obscure and had no relationship to the goods identified in the trademark application.

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