TTAB Dismisses Section 2(e)(3) Petition for Cancellation of SWEDISH FIRESTEEL for Fire Igniters
Petitioner Ronald W. Fontaine sought to cancel a registration for the mark SWEDISH FIRESTEEL for "hand-operated fire igniter in the form of metal sticks with a holder and a tin, and hand-operated fire strikers" [SWEDISH disclaimed] on the ground that the mark is primarily geographically deceptively misdescriptive under Section 2(e)(3). Fontaine's petition went up in smoke, however, when he failed to satisfy the second element of the Section 2(e)(3) test. Ronald W. Fontaine v. Light My Fire, AB, Cancellation No. 92051304 (January 12, 2012) [not precedential].
A mark is primarily geographically deceptively misdescriptive if "(1) the primary significance of the mark is a generally known geographic location; (2) the consuming public is likely to believe the place identified by the mark indicates the origin of the goods bearing the mark (i.e., that a goods/place association exists), when in fact the goods do not come from that place; and (3) the misrepresentation would be a material factor in the consumer's decision to purchase the goods."
Prong 1: The Board agreed with Petitioner that the primary significance of the mark SWEDISH FIRESTEEL is geographical. The addition of FIRESTEEL to SWEDISH does not detract from the primary geographic significance of the mark.
Prong 2: The second element of the test raises two inquiries. As to the first inquiry - whether consumers will believe that the goods come from Sweden - Petitioner offered no evidence.
[P]etitioner has not proved that consumers associate the country of Sweden with the type of goods of respondent. The sole evidence petitioner can point to in the record is respondent’s admission that the Swedish military uses fire starter devices. This, by itself, is insufficient to establish a goods/place association.
As to the second inquiry under Prong 2 - whether the goods come from Sweden - Petitioner argued that because the "only essential part" of Respondent's device is not made in Sweden, then the entire product should be considered as not originating in Sweden: "Specifically, respondent contends that the flint rod is the 'only essential part' of respondent’s fire starter device because it is impossible to produce a spark in the absence of pyrophoric metals or ferrocerium."
The Board, however, found that each part of the device is equally important and essential, and that the five other component parts originate in Sweden: (1) striker, (2) striker handle, (3) flint handle, (4) lanyard, and (5) lock.
Moreover, Respondent is a Swedish company with headquarters, research facilities, and production facilities in Sweden. The finished (not Finnish - ed.) product is assembled in and distributed from Sweden. Therefore the Board concluded that Respondent's goods do originate in Sweden.
And so, having found that Petitioner Fontaine wholly failed to satisfy the second prong of the 2(e)(3) test, the Board declined to consider the third prong and instead dismissed the petition for cancellation.
TTABlog comment: Respondent's registration was more than five-years old when the petition for cancellation was filed [wrong! see below]. However, a registration more than five-years old may be cancelled on the ground of geographic deceptiveness. See Consorzio del Prosciutto di Parma v. Parma Sausage Products, Inc., 23 USPQ2d 1894 (TTAB 1992). [However, Parma is an old Section 2(a) deception case, not a 2(e)(3) case.]
TTABlog correction: Anne Gilson Lalonde has pointed out to me that the registration was not five-years old when the petition was filed. The Board's citation of the K-Swiss decision in footnote 1 is strange because it is simply irrelevant here: not only was the subject registration less than five-years old, but also there was no evidence that Respondent changed the geographic source of its goods after the registration issued. Furthermore, as Anne points out in her comments, it is not at all clear that a Section 2(e)(3) claim is available against a 5-year old registration!
Text Copyright John L. Welch 2012.