TTAB Affirms Geographical Descriptiveness Refusal of NEWBRIDGE HOME for Household Goods
The Board affirmed a Section 2(e)(2) refusal of NEWBRIDGE HOME, finding it to be primarily geographically descriptive of silverware, jewelry, and kitchen goods [HOME disclaimed]. Applicant argued that "Newbridge" is unknown to the average consumer, but the evidence submitted by Examining Attorney Kristin Carlson convinced the Board that Newbridge would be recognized as a commercial center in Ireland. In re The Newbridge Cutlery Company t/a Newbridge Silverware, Serial No. 79094236 (April 29, 2013) [not precedential].
For a mark to be deemed primarily geographically descriptive under Section 2(e)(2), it must be shown that (1) the mark's primary significance is a generally known geographic location; and (2) the relevant public would be likely to make a goods/place association, that is, would be likely to believe that the goods originate in the place named in the mark. When the goods do indeed come from the location named, then a goods/place association may be presumed.
However, a mark is not "primarily" geographic where the geographic meaning is minor, obscure, remote, or unconnected with the goods
There was no dispute that applicant’s goods originate in Newbridge, Ireland. Applicant maintained that Newbridge is unknown to the "mill-run American consumer." The evidence showed, however, that Newbridge is the second largest town in County Kildare and the seventeenth largest in the Republic of Ireland. It is listed in the Columbia Gazetteer of the World, and is described on the Internet as "a large commercial town with plenty of shops, coffee shops, restaurants, hotels and pubs." One of its attractions is Applicant's silverware visitor centre. Moreover, Newbridge hosts some of the most famous horse races in the world.
Applicant urged that the popularity of Newbridge is driven in large part by applicant’s presence, and that its mark has acquired secondary meaning as a sourced indicator for its products. The Examining Attorney agreed that Newbridge is "world renowned" for silverware, but she noted that Applicant "appears to have entered its goods into commerce in the United States only relatively recently," and therefore a Section 2(f) claim would not succeed. In fact, Applicant did not enter a 2(f) claim.
Finally, Applicant feebly argued that NEWBRIDGE has another meaning, which derives from the joinder of the words “new” and “bridge”: it denotes or evokes "a path from a position of lack to one of fulfillment, or a means of joining the consumer with his/her goals by means of a 'bridge' that is 'new.'" Blarney, said the Board.
To the extent the evidence of record creates a genuine issue regarding the primary significance of Newbridge in the minds of American "homeware" consumers, such that a goods/place association cannot therefore be presumed from the fact that the goods come from Newbridge, the examining attorney has presented evidence sufficient to establish that American consumers of these products would in fact make such as association. Moreover, the town of Newbridge is not sufficiently remote, minor, or obscure that the goods/place association would not be made.
And so the Board affirmed the refusal.
Read comments and post your comments here.
TTABlog note: For a collection of Section 2(e)(2) postings, go here.
Text Copyright John L. Welch 2013.
posted by John L. Welch @ 5/29/2013
7 comments
7 Comments:
If the town of Newbridge is known as a place where these kinds of goods come from, and it has that reputation because of applicant's activities, why does that not prove secondary meaning?
It was the horse races that did them in - but for that, this would be registered. ;-)
Totally disagree with this decision on the record presented. The Examiner's evidence FAILS to establish the relevant public would be likely to make a goods/place association. This is completely idiotic. NEWBRIDGE HOME goods are known to come from NEWBRIDGE Ireland but IMPORTED FROM DETROIT for autos/goods aren't known by the relevant consuming public to come from DETROIT?
To Anonymous #1, "why does that not prove secondary meaning?"
Secondary meaning cannot be proven if it is never alleged in the first place. See John's summary: "In fact, Applicant did not enter a 2(f) claim."
It's not clear what the Detroit rant above is about, but if you're wondering why IMPORTED FROM DETROIT isn't primarily geographically descriptive, take a look at the mark and the relevant law. It’s not that the goods aren’t known to come from the Detroit, but rather that the Lanham Act pertains to U.S. commerce. To "import" means to bring goods in from another country. Thus, IMPORTED FROM DETROIT is incongruous.
Why would the PTO want to ignore that if secondary meaning exists, that is enough for registration, even if the applicant does not ask for that consideration?
Strikes me as the TTAB just trying to be as negative as they can be, for no good reason
It seems as if the applicant has been penalized for having achieved fame prior to applying for trademark registration. The reason that the town has any recognition is that the applicant has acquired fame. The TTAB seems to have ignored the examples of Waterford, Oneida, etc.
Through decades of work, Newbridge dared to create a reputation for themselves and their goods.
Their mistake in the eyes o the TTAB? Having taken as their trademark the name of the small city they are based in. A city in which they have always been the only company producing the type of goods sought to be protected by their trademark.
The USPTO examiners and the TTAB have penalized Newbridge for these simple facts.
It surely must be a first.
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