Designer’s Connection with Paris Insufficient to Overcome a Section 2(e)(3) Refusal

Kumiko Ide | October 24, 2012

In re Miracle Tuesday, LLC

October 4, 2012

Panel: Rader, Linn, O’Malley.  Opinion by O’Malley

Summary

The U.S. Court of Appeals for the Federal Circuit affirmed the decision of the Trademark Trial and Appeal Board (“the Board”), refusing to register the mark JPK PARIS 75 and design on the grounds that it is primarily geographically deceptively misdescriptive under Section 2(e)(3) of the Lanham Act, 15 U.S.C. § 1052(e)(3).  While the CAFC does not endorse a rule that the goods need to be manufactured in the named place to originate there, there must be some other direct connection between the goods and the place identified in the mark.  In this case, the CAFC found there is no evidence of a current connection between the goods and Paris.

商標審判は、商標「JPK PARIS 75」は、「産地について誤信を生じさせる商標(primarily geographically deceptively misdescriptive)」であると認定し、CAFCは、これを支持した。 CAFCは、商品がその産地にて製造される必要があるとは示さなかったものの、商品とその産地には直接的な関係が必要であると示した。本件では、商品とパリに直接的な関係が存在するという証拠はなかった

Details

The applicant filed an application with the United States Patent and Trademark Office for the mark JPK PARIS 75 and design, shown below, for sunglasses, wallets, handbags and purses, travel bags, suitcases, belts, and shoes:

 

 

 

 

The Examining Attorney refused to register the mark on grounds that it was “primarily geographically deceptively misdescriptive” in relation to the goods.  The Board affirmed, and the applicant appealed.

A mark is primarily geographically deceptively misdescriptive, and thus barred from registration if:

(1) “the primary significance of the mark is a generally known geographic location”;

(2) “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

(3) “the misrepresentation was a material factor in the consumer’s decision” to purchase the goods.

The applicant did not challenge the Board’s finding that the primary significance of the mark is Paris, and instead, focused on the remaining two elements.

Association & Origin

The second element involves two questions:

(1) whether there is an association between the goods and the place identified; and

(2) whether the applicant’s goods in fact come from that place.

As to the first inquiry, the CAFC stated that because it is undisputed that Paris is famous for fashion and fashion accessories, including the goods identified in the application, there is sufficient evidence of a goods/place association.

The second inquiry asks whether the goods will in fact originate from the named place.  The applicant argued that because the designer has a significant connection with Paris, and customers are more interested in the designer’s origin than the origin of the goods themselves, the goods should be considered to “originate” in Paris.  In fact, the designer, Jean-Pierre Kalifa, is Parisian, and while he currently resides in the United States, lived in Paris for approximately twenty-two years until 1986.

The CAFC disagreed with the applicant and stated that the relevant inquiry under the statute is whether there is a connection between the goods and Paris – not between the designer and Paris.  Accordingly, that the designer lived in Paris in the past is insufficient to establish that the goods originate there.  Because the applicant is located in Miami, the designer is located in the United States, and the goods at issue are designed and produced somewhere other than Paris, the CAFC found that there is no evidence of a current connection between the goods and Paris.

Materiality

With regards to the third element of “whether a substantial portion of the relevant consumers is likely to be deceived” by the marks’ misrepresentation of a goods/place association, the CAFC supported the Board’s finding that a substantial portion of relevant customers would be deceived into thinking the goods identified came from Paris.

For the foregoing reasons, the CAFC affirmed the decision of the Board.

Takeaway

If a geographic location will be a part of the mark, and there exists an association between the goods and the place identified, the applicant must ensure that the goods do/will in fact “originate” from the named place.

Full Opinion

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