For a Geographically Significant Mark, the Origin of the Designer Does Not Establish the Origin of the Goods
|Judges: Rader, Linn, O’Malley (author)|
|[Appealed from TTAB]|
In In re Miracle Tuesday, LLC, No. 11-1373 (Fed. Cir. Oct. 4, 2012), the Federal Circuit affirmed the TTAB’s refusal to register the mark JPK PARIS 75 and design because it was primarily geographically deceptively misdescriptive under section 2(e)(3) of the Lanham Act, 15 U.S.C. § 1052(e)(3).
“JPK” are the initials of Jean-Pierre Klifa, who designs handbags and manages Miracle Tuesday, LLC (“Miracle Tuesday”). Mr. Klifa is a French citizen who resides in the United States, although he lived in Paris for approximately twenty-two years until 1986.
Miracle Tuesday applied to register the mark JPK PARIS 75 in connection with various fashion accessories. The examining attorney refused to register the mark on the ground that it was primarily geographically deceptively misdescriptive in relation to those goods, because the primary significance of the mark was Paris, but the goods did not geographically originate from Paris. The TTAB affirmed the examiner’s decision.On appeal, the Federal Circuit held that the mark was primarily geographically deceptively misdescriptive, and thus barred from registration. The Court first noted that a mark falls in this category 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 Court acknowledged that Miracle Tuesday did not challenge the TTAB’s finding that the primary significance of the mark was Paris, a well-known center of design and fashion, but instead argued only the second and third elements.
“[T]he relevant inquiry under the statute is whether there is a connection between the goods and Paris – not between the designer and Paris. . . . Given the statutory focus on the geographic origin of the goods, Miracle Tuesday’s attempts to shift the inquiry to the historical origin of the designer must fail.” Slip op. at 9 (citation omitted).
Addressing the second element, the Federal Circuit held that Miracle Tuesday’s goods did not come from the place the public would reasonably believe them to originate. The Court noted that the element involves two questions: whether there is an association between the goods and the place identified
(a goods/place association) and whether the goods come from that place. The Court determined that there was a goods/place association because relevant purchasers were likely to think of Paris as a known source for fashion accessories.
As to whether the goods came from Paris, Miracle Tuesday argued that they did because the designer, Mr. Klifa, has a significant connection with Paris and consumers are more interested in the designer’s origin than the origin of the goods themselves. The Federal Circuit acknowledged that goods may be deemed to originate from their place of manufacture, place of design, place where their main component or ingredient comes from, or place where the applicant has its headquarters or research and development facilities. But the Court rejected the argument that the origin of the designer of the goods is sufficient to establish the origin of the goods: “Regardless of whether today’s consumers consider and care about the origin of the designer of the goods they purchase, the relevant inquiry under the statute is whether there is a connection between the goods and Paris – not between the designer and Paris.” Slip op. at 9. The Court concluded that there was no evidence of a current connection between Miracle Tuesday’s goods and Paris.
Turning to the third element, the Federal Circuit held that the mark’s geographic misrepresentation was a material factor in the buying decision. The Court noted that a prima facie case of materiality requires “some indication that a substantial portion of the relevant consumers would be materially influenced in the decision to purchase the product or service by the geographic meaning of the mark.” Id. at 10 (quoting In re Spirits Int’l, N.V., 563 F.3d 1347, 1357 (Fed. Cir. 2009)). The Court noted further that the TTAB inferred materiality based on evidence that Paris is famous as a source of the goods in question. Miracle Tuesday argued that the standard for materiality should have been whether the word Paris did in fact deceive the public, relying for support on In re Les Halles de Paris J.V., 334 F.3d 1371 (Fed. Cir. 2003). Rejecting the argument for a heightened standard, the Court explained that Les Halles de Paris involved a services mark and that there is a “distinction between the evidence necessary to give rise to an inference of materiality for goods and that necessary to give rise to that same inference for services.” Slip op. at 12. The Court concluded that Paris’s fame for fashion would create a presumption of materiality in consumers’ buying decisions and that Miracle Tuesday had failed to rebut the presumption. The Court accordingly held that the geographic misrepresentation was material and would deceive consumers regarding the source of Miracle Tuesday’s goods.Lastly, the Federal Circuit rejected Miracle Tuesday’s argument that the TTAB failed to consider articles Miracle Tuesday submitted regarding consumer purchasing decisions and “country of origin” issues. Acknowledging that the TTAB did not specifically refer to the articles in its decision, the Court noted that their absence did not mean the evidence was not considered. Further, the Court concluded that the TTAB’s decision made it clear that the TTAB fully considered Miracle Tuesday’s theory of the word “originate,” which the articles were meant to support.