Federal Circuit Rolls Back Geographic Descriptiveness Rejections for Trademark Applications
Intellectual Property News
I’m sure Newbridge, Ireland, is a lovely place, but most Americans haven’t heard of it. That was the spirit of the Court of Appeals for the Federal Circuit’s decision in In re Newbridge Cutlery Co., involving the trademark application NEWBRIDGE HOME for silverware, jewelry, and kitchen goods. The January 15, 2015, decision clarifies the limits of the trademark doctrine of primary geographic descriptiveness. As directed by Section 2(e)(2) of the Lanham Act, the United States Patent and Trademark Office (USPTO) refuses registering a mark if it is “primarily geographically descriptive” of the source of the goods or services. While this doctrine’s primary purpose is to prevent registering a commonly known geographic place with a particular product (e.g., MEMPHIS BBQ STORE for a restaurant serving Memphis-style barbecue ribs), in more recent years Trademark Examining Attorneys have cited Section 2(e)(2) to refuse registrations with much less commonly known source locations. The Federal Circuit’s decision is a helpful reminder to the USPTO of the doctrine’s limits and provides additional protections to applicants.
The Trademark Manual of Examining Procedure sets forth the following three-prong test to determine where a trademark is primarily geographically descriptive:
- The primary significance of the mark is a generally known geographic place or location;
- The goods and/or services for which the applicant seeks registration originate in the geographic place identified in the mark; and
- Purchasers would be likely to make a goods-place or services-place association; that is, purchasers would be likely to believe that the goods and/or services originate in the geographic place identified in the mark.
During the application process at the USPTO, where it is just the examining attorney and the applicant, the USPTO presumes a goods-place association under prong (3) exists when the goods do, in fact, originate from the place named.
In the Newbridge case, no one disputed that the products bearing the NEWBRIDGE HOME mark originated in Newbridge, Ireland. The sole question was whether Newbridge was a “generally known geographic place” under prong (1).
The Federal Circuit has emphasized that the word “primary” should not be overlooked, and if the geographic meaning is minor, obscure, remote, or unconnected with the goods then registration should not be refused as primarily geographically descriptive. Where a geographic term bears particular significance to the relevant consumers rather than the American public as a whole, courts and the PTO consider the meaning the consuming public provides.
In the Newbridge case, the Trademark Trial and Appeals Board (TTAB), which resolves disputes concerning the registration of trademarks, found that Newbridge, Ireland, was a place “generally known” to the U.S. 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 including Wikipedia and tourism websites that advertise the location as “a large commercial town” with a “silverware visitor centre” in addition to museums, gardens, historical and battle sites, and a famous horse-racing track.
The Federal Circuit reversed the TTAB’s holding, finding that “[t]he conclusion that Newbridge, Ireland, a town of less than twenty thousand people, is a place known generally to the relevant American public is not supported by substantial evidence.” The Federal Circuit explained that simply existing as a named location with an online presence is not the same as evidence showing “the extent to which the relevant American Consumer would be familiar” with the location. The court specifically cautioned against reliance solely on Internet presence in these circumstances, stating, “[t]he Internet contains enormous amounts of information: some of it is generally known, and some of it is not.”
This case will be seen as crucial support for businesses in less well-known locations, particularly those who are in business outside the area’s traditional industry. While this case does not change the legal standard applicable to primarily geographic descriptive refusals, it does emphasize the value of arguing the sufficiency of evidence, particularly with regard to Internet evidence. As with most refusals, Section 2(e)(2) places the burden on the Trademark Office to adequately support its refusal. In our experience, the USPTO has often relied on Internet evidence to assert a “primary geographic significance,” even for places that most Americans have never heard of. In these cases, businesses and trademark owners can now hold the USPTO’s feet to the fire and require that they provide evidence of such general knowledge.
Of course, this does not change the fact that clients should not rely on well-known locations to distinguish their brands. Attempting to register NASHVILLE GUITAR for a music equipment or NORTHERN ALABAMA PAIN MANAGEMENT for healthcare services will certainly prompt warranted rejections. But if it is your dream to launch BUCKSNORT SODA COMPANY from your home in Bucksnort, Tennessee, protecting that brand may have just gotten easier.