Tuesday, March 18, 2014

Test Your TTAB Judge Ability: Is "NY" Primarily Geographically Deceptively Misdescriptive for Cosmetics Made Elsewhere?

Nature's Youth, Inc. sought to register the mark NY for "cosmetics, face creams, lotions for cosmetic purposes," but the PTO refused registration under Section 2(e)(3). The applicant failed to respond to a Rule 2.61 request for information about the origin of the goods, and so the Board assumed that they did not originate in New York. Would purchasers mistakenly believe that the goods did originate in New York, and would that belief be material to the purchasing decision? The examining attorney said yes. How do you think this came out? In re Nature's Youth, Inc., Serial No. 85747419 (March 13, 2014) [not precedential].

For a trademark to be refused registration under Section 2(e)(3), the PTO must show that:

(1) the primary significance of the mark is a generally known geographic place;
(2) the goods do not originate from that place;
(3) purchasers would likely believe that the goods did originate in that place; and
(4) that belief would be a material factor in the purchasing decision of a substantial portion of relevant purchasers.

Applicant remained silent as to point 2, but contested points 1, 3, and 4. It maintained that "NY" stands for "Nation's Youth," and has many other meanings as well. The evidence, however, showed that "NY" will primarily be understood as a reference to New York. None of the other meanings relate to the involved goods, and there was no evidence that "NY" has been actively promoted as an abbreviation for applicant's name so as to offset the term's geographical significance.

As to point 3, the evidentiary threshold is not high; little more is required than to show that the consumer identifies the place as a known source of the goods. New York, being a major metropolis, is the home to several of the world's largest "beauty companies" (e.g., Estee Lauder, Avon Products, and Coty). Thus New York is a known source of cosmetics, and a goods/place association exists between New York and the identified goods.

As to point 4, the evidence must show that the (mistaken) belief that the goods come from New York would be material to the decision to purchase the goods.

Generally, the burden to prove materiality will be satisfied if there is evidence showing that the place named in the mark is well known for the goods; or the goods are a principal product of the place named in the mark; or the goods are, or are related to, the traditional products of the place named in the mark, or are an expansion of the traditional products of the place named in the mark.

The Board contrasted this case with  In re Compania de Licores Internacionales S.A., in which significant evidence demonstrated that Cuba and its capital, Havana, are "famous for rum," leading the Board to conclude that "if rum originates from Cuba it would be a material consideration to consumers in deciding whether to purchase."

Here, the limited record did not support a finding that New York is famous for cosmetics, or even that cosmetics are a principal or a traditional product of New York. The evidence submitted by the examining attorney consisted of a Wikipedia entry describing New York as a "major center for ... fashion," an online article stating that the city is home to five companies in the "Top 20 Global Beauty Companies," and an website entry about New York-based cosmetic companies. However, as to the first two items the Board observed, "fashion" is not synonymous with "cosmetics," and the third item was merely a puff piece about supporting local businesses and locally-made products.

In sum, the evidence failed to show that the (mistaken) belief that applicant's goods emanate from New York would play a significant role in the purchasing decision, and so the Board reversed the Section 2(e)(3) refusal.

However, the Board affirmed the refusal to register based upon applicant's failure to respond to the Rule 2.61 request for information.

Read comments and post your comment here.

TTABlog note:  Had applicant answered the Rule 2.61 request, it would have had a registration. Should it re-apply? Would the PTO bolster its case with additional evidence?

Text Copyright John L. Welch 2014.


At 8:17 AM, Anonymous JLHDEA said...

John, if the examiner alternatively refused under 2e2, would the Board have assumed that the goods did originate in NY, in light of their 2.61 silence? Seems to me there should've been both refusals, thereby forcing applicant to clarify the origin in defense of one of the refusal.

At 8:36 AM, Blogger John L. Welch said...

Good question. I agree with you.

At 9:00 AM, Anonymous Gene Bolmarcich said...

It would make a lot more sense if descriptiveness and mis-descriptiveness were simply considered to be a single basis for refusal. In essence they are based on the exact same rationale, that is, that consumers will consider the term to be descriptive. Only the underlying facts change the basis for refusal. It's important to remember that mis-descriptiveness doesn't focus on the "mis" part (i.e. deception is not at issue). By making it one refusal covering both accurate and inaccurate descriptions, we don't have to worry about questions such as the one posed above.

At 9:24 AM, Anonymous Anonymous said...

One of my frustrations with Examining Attorneys is the disparity in the quality of examination from one to the next. The Examining Attorney sure seemed to mail it in on this case, not to mention failing to give a complete rejection as mentioned above with the 2e2 rejection.

Unfortunately, registration of poorly-examined marks can lead to unnecessary litigation when an owner believes they own something that they might not.

At 10:09 AM, Anonymous Freiburger said...

Counsel should not have just ignored the requirement for information. You simply cannot do that and reasonably hope to win on appeal. “What an applicant cannot do . . . is to ignore a request made pursuant to Trademark [Rule] 2.61(b), as applicant has here.” In re SPX Corp., 63 U.S.P.Q.2d 1592, 1597 (T.T.A.B. 2002).

At 3:42 PM, Anonymous Roberto Ledesma said...

If failure to respond to an examining attorney's request for information is grounds for refusal then why is the TTAB even considering the substantive refusal?

At 5:41 PM, Anonymous Bill Finkelstein said...

This case raises an issue that was only discussed implicitly: the dichotomy between the trademark owner's headquarters and the origin of the goods. Just because Coty has a hq office in NY, doesn't mean the goods come from there - in fact, they probably come from France. Considering the anonymous source rule, no one could expect consumers to think about where a company's hq office is: the Board should have ruled that such information is irrelevant. The test is whether the public thinks Nantucket Nectars come from Nantucket, irrespective of the mark owner's corporate office being in Nantucket or Nome. Plus many companies have several corporate offices - that has nothing to do with anything.

At 5:44 PM, Anonymous Anonymous said...

With the misdescriptiveness refusal reversed, maybe the application will go abandoned now for failure to respond to the Request for Information and the applicant can file a Petition to Revive to supply the information that was requested in the Final Action but omitted in the response?

At 7:39 PM, Blogger John L. Welch said...

Another good question. Why not just rely on the 2.61 failure to respond. Not likely that will be reversed on appeal.

At 9:25 AM, Anonymous Anonymous said...

Generally, if something requested by the Examiner, such as a disclaimer, is required, and the applicant appeals, and loses the appeal at TTAB, doesn't the applicant have an opportunity to finally "give in" and supply the disclaimer before the application goes abandoned? It seems like they could do the same thing in this case with supplying the 2.61 Request for Information, even if it requires filing a Petition to Revive.

At 12:18 PM, Blogger John L. Welch said...

I think if the applicant had contested the propriety of the request for information, and had lost, then the Board might allow it to submit the information. Here applicant did not respond at all to the request, and ignored it on appeal.
Even so, what if applicant were allowed to respond now, and it's response was that the goods do originate in New York. Do you send the application back to the Examining Attorney?
In the disclaimer situation, once the disclaimer is submitted, the case is over. Here, it might not be over.

At 11:04 AM, Anonymous Anonymous said...

Please look at the rules. The only action permitted post appeal is entry of a disclaimer.


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