Miracle Tuesday is a fashion company that desired to register a trademark with the word “Paris” in it. The designer of goods for Miracle Tuesday, Jean-Pierre Klifa is a French citizen who lived in Paris for twenty-two years, and currently resides in the United States.
The examining trademark attorney rejected Miracle Tuesday mark on the grounds that the goods were “primarily geographically deceptively misdescriptive.” The examiner reasoned that the primary significance of the mark is the word Paris which is famous in fashion, but the only connection between the goods and Paris is that Mr. Klifa used to live in Paris. On appeal, the Board found the evidence sufficient to show that a substantial portion of relevant consumers would be deceived into believing that the goods came from Paris.
Under Section 2(e)(3) of the Lanham Act, a mark may not be registered on the principal register if the mark, “when used on or in connection with the goods of the applicant is primarily geographically deceptively misde-scriptive of them.” 15 U.S.C. § 1052(e)(3). The court further explained that a mark is primarily geographically deceptively misdescriptive, and 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. In re Cal. Innovations, Inc., 329 F.3d 1334, 1341 (Fed. Cir. 2003).
The majority of the court’s discussion of the case was directed towards the second factor, of the above test. The court reasoned that the consuming public would likely believe that the goods would have come from Paris because Paris is known for fashion.
The court further discussed that a good could be deemed to be made from the indication of mark, even if the goods were not manufactured there if there is a significant connection indicating that the goods originated from that place. See Corporacion Habanos, 88 U.S.P.Q.2d at 1791 (“[A] product might be found to originate from a place where the main component or ingredient was made in that place.”) Specifically, the courts stated “that goods need not be manufactured in the named place to originate there – and we do not endorse application of a contrary rule here – it is clear that there must be some other direct connection between the goods and the place identified in the mark (e.g., the place identified is where the goods are designed or distributed, where the applicant is headquartered or has its research and development facility, or where a main component of the good originates).”
Therefore, the court ruled that consumers would likely be confused on the location of the origin of the mark given the Paris is known for fashion.
AUSTIN PATENT AND TRADEMARK ATTORNEY TAKEAWAYS:
1) If your client is trying to get a geographically descriptive mark, make sure some of the product was conceived in a certain locale. This can be accomplished by notebooks, documented sketches, emails, etc. In In Re Miracle, if there was any connection between the where the products were made other than Mr. Klifa living in Paris for two decades, the case may have been decided differently.
2) There are different standards for geographically descriptive marks for service marks and marks for goods. If the mark was for a service mark, consumers may not be confused of the origin of their services. However, this may vary based on the types of services being performed. For example, a car repair shop where consumers can see their oil being changed, is not likely to believe that their car is being repaired in a different locale.
3) If you do include a geographically descriptive mark and there may be an issue of the origin of the goods, try to make the geographic descriptive less material than other features of the mark.