February 2015
Federal Circuit Reverses TTAB’s Refusal to Register Mark as Primarily Geographically Descriptive
| Judges: Prost, Linn (author), Hughes |
| [Appealed from TTAB] |
In In re Newbridge Cutlery Co., No. 13-1535 (Fed. Cir. Jan. 15, 2015), the Federal Circuit reversed the TTAB’s decision to affirm the trademark examiner’s refusal to register the NEWBRIDGE HOME mark as being primarily geographically descriptive.
The Newbridge Cutlery Company (the “applicant”) is an Irish company headquartered in Newbridge, Ireland, that designs, manufactures, and sells housewares, kitchenware, and silverware under the NEWBRIDGE HOME mark. Applicant manufactures some, but not all, of its goods in Newbridge, Ireland, and its products are available for sale in the United States online and through certain retail outlets. Applicant relied on its International Registration to seek a trademark registration in the United States for NEWBRIDGE HOME covering silverware, jewelry, desk items, and kitchenware.
The trademark examiner refused registration, relying on 15 U.S.C. § 1052(e)(2) in finding the mark primarily geographically descriptive when applied to applicant’s goods. The TTAB affirmed, concluding that Newbridge, Ireland, is a generally known geographic place and the relevant American public would associate applicant’s goods with Newbridge, Ireland.
Subsections (e)(2) and (e)(3) of 15 U.S.C. § 1052 provide that “[n]o trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it . . . (e) [c]onsists of a mark which . . . (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them . . . [or] (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them.” The Federal Circuit explained that “to refuse registration under either subsection the Trademark Examiner must show that: (1) ‘the mark sought to be registered is the name of a place known generally to the public,’ . . . and (2) ‘the public would make a goods/place association, i.e., believe that the goods for which the mark is sought to be registered originate in that place.’” Slip op. at 9-10 (quoting In re Societe Generale Des Eaux Minerales De Vittel S.A., 824 F.2d 957, 959 (Fed. Cir. 1987)). The Court further noted that “[t]o refuse registration of a mark as being primarily geographically descriptive, the PTO must also show that (3) ‘the source of the goods is the geographic region named in the mark.’” Id. at 10 (quoting In re Jacques Bernier, Inc., 894 F.2d 389, 391 (Fed. Cir. 1990)). Moreover, the Court observed that the PTO has held that a goods/place association can be presumed where “(1) a location is generally known; (2) the term’s geographic significance is its primary significance; and (3) the goods do, in fact, originate from the named location.” Id. at 11.
“Under the statute, it is clear that refusal to register extends under both subsections (e)(2) and (e)(3) only to those marks for which the geographical meaning is perceived by the relevant public as the primary meaning and that the geographical significance of the mark is to be assessed as it is used on or in connection with the goods.” Slip op. at 8.
The Federal Circuit’s analysis focused primarily on whether Newbridge, Ireland, is a place known generally to the public. The TTAB concluded that Newbridge, Ireland, is a place known generally to the public because it is “(1) the second largest town in County Kildare and the seventeenth largest in the Republic of Ireland; (2) it is listed in the Columbia Gazetteer of the World; and (3) it appears on a number of websites . . . .” Id. at 12. Further, the PTO implied at oral argument that a location is generally known if the existence of the location can be reasonably found on the Internet.
The Federal Circuit disagreed, holding that the evidence as a whole suggested that Newbridge, Ireland, is not generally known; thus, to the relevant public, the mark NEWBRIDGE is not primarily geographically descriptive of the goods. The Court explained that there was no evidence to show the extent to which the relevant American consumer would be familiar with the locations listed in the gazetteer. Moreover, the Court found that the fact that Newbridge, Ireland, is mentioned on some Internet websites does not show that it is a generally known location, as the Internet contains enormous amounts of information. On this point, the Court stated: “[I]t is simply untenable that any information available on the internet should be considered known to the relevant public.” Id. at 14. The Court further noted that its finding that Newbridge, Ireland, is not generally known is supported by the fact that certain maps and atlases do not include it, and that “Newbridge” has other geographical and nongeographical meanings. Accordingly, the Court reversed and remanded the TTAB’s refusal to register the mark.
