IN RE THE NEWBRIDGE CUTLERY COMPANY
A new look at geographically descriptive marks.
In this case, Irish Company Newbridge was trying to trademark the name “NEWBRIDGE HOME”, where products were designed out of Newbridge, Ireland.
Brief History Regarding Geographically descriptive trademarks:
The Lanham Act instructed the PTO to refuse to register a trademark if “when applied to the goods of applicant it is primarily geographically descriptive or deceptively misdescriptive of them.” However, geographically descriptive marks could be registered if the trademark acquired distinctiveness. The basis of this portion of the Act was to prevent a first registrant from preempting all other business from identifying the source location of their goods, yet be a more nuanced restriction that considered the primary significance of the trademark when applied to the goods.
In a prior case, Nantucket (Nantucket, 209 U.S.P.Q. 868, 871 (T.T.A.B. 1981)), the shirt company tried to trademark the term NANTUCKET. However, the court of trademark and patent appeals concluded that there was no showing of an association in the public’s mind between the place and the marked goods.
To determine if a mark is primarily description and to refuse registration for a geographically descriptive trademark, the Trademark Examiner must show that: (1) “the mark sought to be registered is the name of a place known generally to the public,” Vittel, 824 F.2d at 959, 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.” Id. Accord In re Miracle Tuesday, LLC, 695 F.3d 1339, 1343 (Fed. Cir. 2012) (describing analogous factors for primarily geographically deceptively misdescriptive marks) (citing Cal. Innovations, 329 F.3d at 1341). To 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.” Bernier, 894 F.2d at 391. Accord Trademark Manual of Examining Procedure (“TMEP”) § 1210.01(a). Utilizing these test, the only public we are concerned about is the public in the United States, and not in foreign countries.
The PTO has long held that 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, a goods/place association can be presumed. See, e.g., In re Handler Fenton Westerns, Inc., 214 U.S.P.Q. 848, 849 (T.T.A.B. 1982); Board’s Decision at *3 (citing cases); TMEP § 1210.04 (citing cases); see also Nantucket, 677 F.2d at 102 (Nies, J., concurring).
Analysis to present case:
The board concluded that Newbridge, Ireland is a place generally known to the public due to the tourism in Newbridge (Newbridge has a tourism center and website links).
However, this court found that a town of less than twenty thousand people, an ocean away, was not generally known to the American Public. Furthermore, this court stated that because Newbridge, Ireland could be found on a map, does not equate to it being known. Thus, to the relevant public the mark NEWBRIDGE is not primarily geographically descriptive of the goods, which is what matters. See, e.g., Nantucket, 677 F.2d at 100 n.8 (“public association is determinative of arbitrariness”).
Patent And Trademark Attorney Take-A-Ways:
- When choosing a brand name, remember that putting a Texas map, “TEXAS”, “AUSTIN”, “HOUSTON” or “LONE STAR STATE” on your product will not be enough to distinguish yourself from other brands. I have had several potential clients want to protect names such as “AUSTIN TATTOOS,” however this name is obviously geographically based.
- For foreign clients, if you are located out of a small city that wouldn’t be known in the United States, you can potentially trademark the name of your town! (if that’s where your products are originated from).
- Because of potential issues that may arise when trying to trademark a name with a city, state in it, I strongly recommend clients try to avoid the geographic description in the name.