CAFC Affirms TTAB: JPK PARIS 75 Geographically Deceptively Misdescriptive of Fashion Accessories
The U.S. Court of Appeals for the Federal Circuit (CAFC) has upheld the TTAB's decision of February 3, 2011 [TTABlogged here], which affirmed the PTO's Section 2(e)(3) refusal to register the mark shown immediately, finding it to be primarily geographically deceptively misdescriptive of sunglasses, wallets, handbags and purses, travel bags, suitcases, belts and shoes. The CAFC ruled that the Board's decision on this issue of fact was based on substantial evidence. In re Miracle Tuesday, LLC, 104 U.S.P.Q.2d 1330 (Fed. Cir. 2012) [precedential].
Miracle Tuesday did not dispute that the primary significance of the mark is Paris. It argued that the Board erred in finding that the goods do not originate in Paris even though the designer of the goods has significant ties to Paris, that the Board applied the wrong standard in concluding that the word PARIS is deceptive, and that it failed to consider certain material evidence in reaching its decision.
When a place is known for producing a product, a goods/place association may be inferred. The question, then, was whether the goods in fact "originate" from the named place. It is not necessary that the goods be manufactured in a particular place in order to originate there: for example, goods may "originate" from a company's headquarters, even though made elsewhere.
It was undisputed that Paris is famous for fashion and fashion accessories. Miracle Tuesday argued that its goods originate from Paris because its designer, Jean Pierre Klifa, has a significant connection with Paris, and because customers are more interested in the designer's origin than the origin of the goods themselves. The CAFC pointed out, however, that the inquiry under the statute is not whether there is a connection between the designer and Paris, but between the goods and Paris. The fact that Mr. Klifa lived in Paris more than 25 years ago is insufficient to establish that goods now marketed under the applied-for mark originated there. The involved goods are made in Asia and designed in Miami. The evidence failed to show a "direct connection" between the goods and Paris, and therefore the Board was correct in its finding regarding origination.
As to the materiality of the misrepresentation, Miracle Tuesday contended that the PTO must prove that use of the word PARIS "does in fact deceive the public." Miracle Tuesday pointed to the CAFC's decision in Les Halles de Paris, where the court imposed a "heightened standard" for proof under Section 2(e)(3). The CAFC pointed out, however, that Halles concerned services, not goods. Because geographic service marks are less likely to mislead the public, the court drew a distinction "between the evidence necessary to give rise to an inference of materiality for goods and that necessary to give rise that same inference for services."
For goods, evidence that a place is famous as a source of those goods suffices to raise an inference of materiality. The Board properly applied that inference. Miracle Tuesday urged that, because customer care more about the designer than the origin of the goods, its mark should be treated like a service mark. The court found no authority for that proposition.
Finally, Miracle Tuesday contended that the Board failed to consider certain evidence about consumer purchasing decisions and "country of origin" issues. The appellate court, however, found that the Board had fully considered the "origination" issue, and that "the mere fact that the Board did not recite all of the evidence it considered does not mean that the evidence was not, in fact, reviewed."
TTABlog comment: If Board or the court were to buy that argument that the designer is more important than the place of origination, and therefore allowed registration here, what happens if the mark is sold to a new company with a different designer. More generally, what happens to the validity of a registration for a mark containing a geographic term when ownership (and its location) changes so that the goods now no longer originate from the same location? Does my question make sense?
Text Copyright John L. Welch 2012.