Geographically Misdescriptive Trademarks

February 4, 2013

Under U.S. trademark law, geographic terms or signs are not registrable as trademarks if they are geographically descriptive or geographically misdescriptive of where the goods/services originate. The theory is that other producers in that area would need to be able to use a geographic term to describe where their goods/services are from and that one person should not be able to prevent others from using that term. If a term is misdescriptive for the goods/services, consumers would be misled and/or deceived by the use of the term on goods/services that do not come from the place identified.

The test used by most federal courts to determining whether a mark is primarily geographically misdescriptive involves a two-step inquiry by the court.  The mark must: (1) have as its primary significance a generally known area; and (2) identify products that purchasers are likely to believe mistakenly are connected to that area.

The recent case Federal Circuit case of In re Miracle Tuesday, LLC, 695 F.3d 1339, 104 U.S.P.Q. 1330 (Fed. Cir. 2013) is an interesting example of the Federal Courts’ application of the prohibition against the registerability of geographically misdescriptive marks.  In Miracle Tuesday, the Court considered the issue of whether the Trademark Trial and Appeal Board (“TTAB”) was correct in its finding that Miracle Tuesday’s application for the mark JPK PARIS 75 was properly refused registration on the basis of geographic misdescriptiveness.  Miracle Tuesday filed its application for JPK PARIS 75 in connection with sunglasses, wallets, handbags and purses, travel bags, suitcases, belts and shoes.  The letters “JPK” were the initials of Jean-Pierre Klifa, the designer of the goods at issue who lived in Paris several decades before filing the application.  There was no evidence that the goods or any component of the goods came for Paris.

The Federal Circuit agreed with the TTAB that because the relevant purchasing public would likely think Paris is a known source for fashion accessories, there was sufficient evidence of a good/place association between Paris and the goods listed in the application.  The Federal Circuit rejected Miracle Tuesday’s argument that the designer had a significant connection to Paris and stated that the relevant inquiry was whether there was a connection between the goods and Paris—not whether there was a connection between the designer and Paris.

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