Thursday, September 27, 2007

TTAB Finds "PARIS BAGUETTE" Geographically Deceptively Misdescriptive of Bread

Applying its standard Section 2(e)(3) test, the Board affirmed a refusal to register the mark PARIS BAGUETTE & Design (shown below) [BAGUETTE disclaimed], finding the mark to be primarily geographically deceptively misdescriptive of bread. In re Paris Croissant Co., Serial No. 78598734 (September 10, 2007) [not precedential].

Applicant Paris Croissant Co., Ltd., a Korean corporation, sought to register its mark for "sandwiches; toast; biscuits; ice cream; bean jam buns; bread; green tea; coffee; coffee-based beverages." Examining Attorney Henry S. Zak and the Board, however, focused on the bread.

The Board found the elements of a Section 2(e)(3) refusal satisfied: (1) the primary significance of the mark is a generally known geographic location; (2) the consuming public is likely to believe that the goods originate from the place identified, when in fact the goods do not; and (3) the misrepresentation would be a material factor in the consumer's purchasing decision.

The presence of the word BAGUETTE and the design element did not alter the primary geographic significance of the mark, since PARIS and its geographic connotation dominate the mark. Applicant argued that the word PARIS would be seen as evoking the "ambiance" or "feel" of Paris, but the Board was unmoved.

As to the second element, Applicant admitted that its goods do not come from Paris, and so the question became whether consumers would believe that Paris is the origin of Applicant's bread. The Board found that the required goods-place association was proven. The evidence "clearly established that consumers would identify Paris as a known source" for bread. Applicant offered two crumby arguments: that French bread is sold worldwide, not just in Paris; and that Americans would not be deceived into thinking that the bread actually originated in Paris.

As to the first point, the Board noted that nothing in the law of Section 2(e)(3) requires that the place named be the only or exclusive source of the goods at issue. As to the second, bread freshly made in Paris is in fact sold in the USA. Moreover, consumers might believe that the bread was made in this country according to recipes used by Parisian bakers.

Turning to the third element, the record established that Applicant's misrepresentation would be material to the consumer's decision to purchase. An inference of materiality may be raised when "the place in question is famous as a source of the goods at issue." Here, the evidence showed that Paris is famous for its bread. "Indeed, bread, especially the baguette, has been regarded as a symbol of Paris."

Finding all three elements of Section 2(e)(3) satisfied, the Board affirmed the refusal to register. Because the refusal was proper as to at least one of the products in Applicant's identification of goods, the refusal was effective as to all the goods.

Text Copyright John L. Welch 2007.


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