In re Miracle Tuesday, LLC, No. 2011-1373 (Fed. Cir. Oct. 4, 2012) (Chief Judge Rader, Circuit Judges Linn and O’Malley)
This trademark appeal involves the wordiest statutory bar to trademark registration: “primarily geographically deceptively misdescriptive.” Before we get into the legal details related to this trademark bar, here’s an overview of the facts.
Miracle Tuesday applied for an intent-to-use trademark registration for this word-plus-design mark:
The company planned to use the mark on sunglasses, wallets, handbags and purses, travel bags, suitcases, belts, and shoes. “JPK” stands for Jean-Pierre Klifa, the manager of Miracle Tuesday and designer of the goods. Klifa is originally from Paris, but he’s lived in the United States for many years.
The trademark examiner denied the application on the grounds that the mark was “primarily geographically deceptively misdescriptive.” The examiner said that Paris is famous for fashion, but the goods—which are fashion-related—aren’t made in or connected with Paris in any way. (Miracle Tuesday is incorporated in Nevada and based in Miami.)
Miracle Tuesday appealed the denial to the TTAB, but the TTAB agreed with the examiner. So Miracle Tuesday appealed the TTAB’s decision to the Federal Circuit.
Primarily Geographically Deceptively Misdescriptive—Say What?
Under Lanham Act § 2(e)(3), a mark can’t get a federal registration if the mark, “when used in connection with the goods of the applicant is primarily geographically deceptively misdescriptive.” What exactly does “primarily geographically deceptively misdescriptive” mean, and why is it a problem? In human speak, the phrase refers to marks that use geographic words, but the goods or services those marks are associated with don’t have anything to do with the location. Generally speaking, consumers are likely to associate geographic terms with some characteristic or quality of the goods. For example, if you saw a wine called “Sonoma Spirits,” you’d probably think the wine was from California. So you’d probably be disappointed if you learned that those wine grapes were actually grown in New Jersey. (Not that there’s anything wrong with New Jersey.) That’s what this registration bar aims to avoid.
There’s a three-part test to determine whether a mark is primarily geographically deceptively misdescriptive: (1) the primary significance of the mark is a generally known geographic location, (2) consumers are likely to think the goods come from the identified place, when, in fact, they don’t, and (3) the location misrepresentation was a material factor in a purchaser’s decision to buy the goods. Miracle Tuesday didn’t challenge the first part of the test, but it argued that the TTAB made some mistakes as to the second and third parts.
The big disagreement in this case was over whether a justifiable connection to Paris existed. Miracle Tuesday argued that since the designer Klifa is a transplanted Parisian, the “Paris” mark wasn’t deceptive when used on goods he designed. In fashion, it said, the designer is central—on the red carpet, interviewers ask celebrities, “Who are you wearing,” not “Where was it made?” Moreover, Miracle Tuesday argued that the place of manufacture isn’t the only consideration; company headquarters, research facilities, or a major part of the product originating from the place can also count.
The Federal Circuit said these arguments didn’t make the cut. Under the statute, the key is an association between the goods and the place, not the designer and the place. (Not to mention, Klifa doesn’t currently live or work in Paris, and hasn’t for a number of years.) Although the Federal Circuit agreed that goods don’t have to be manufactured in the referenced location to “originate” there, the court said, “[I]t is clear that there must be some other direct connection between the goods and the place identified in the mark.” And Miracle Tuesday had none of those: “Simply put, there is no evidence of a current connection between the goods and Paris.”
Use the Right "Material" in Fashion and in Trademarks
Finally, the court looked at the third prong of the test—the material factor prong—and concluded that the Paris reference in the mark would likely deceive consumers. Miracle Tuesday raised some creative arguments, relying on a 2003 Federal Circuit decision, In re Les Halles de Paris, for the proposition that the PTO “must show some heightened standard to show a false association between the services and the relevant geographic location.” But the Federal Circuit called this argument “fundamentally flawed” because Les Halles involved restaurant services, not goods. In Les Halles, the court noted that people generally receive services (particularly at restaurants) at the location of the business. So, a customer is less likely to be deceived about the origin of the services.
The same logic doesn’t apply to goods, though, and the Federal Circuit clarified that “evidence that a place is famous as a source of … goods is sufficient to raise an inference of materiality.” The court said that Paris’s fashion fame was enough to raise an inference that customers could be misled into thinking the handbags and shoes came from Paris. And Miracle Tuesday didn’t have any evidence to rebut that inference. So, the Federal Circuit agreed with the TTAB that Miracle Tuesday couldn’t get a federal registration for its mark.
Geographic Trademark Registration May Require a Miracle
A final thought on registering marks that include geographic terms: it’s tricky. Lanham Act § 2(e)(2) also bars registration of marks that are primarily geographically descriptive—that is, the mark says where the product is from—unless you can show that the mark has gained “secondary meaning” with consumers (consumers associate the mark with your goods, not just the location). Proof of secondary meaning can be time consuming and expensive to acquire, and difficult to demonstrate to the trademark examiner or the TTAB. So you can’t register a mark that refers to the place that the goods are from (at least not initially), and you can’t register a mark that refers to a place the goods aren’t from. And in this case, even if it could show a connection to Paris, Miracle Tuesday had filed an intent-to-use application, which means it probably wouldn’t have met the secondary meaning requirement. In other words, to get this application registered, it would take a miracle.