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 In re Nature's Youth, Inc., Serial No. 85747419 (March 13, 2014) [not precedential].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.
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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.