Test Your TTAB Judge-Ability: Is VENEZIA-MILANO Geographically Deceptively Misdescriptive of Clothing?

The PTO refused to register the mark VENEZIA-MILANO for clothing on the ground that the mark is primarily geographically deceptively misdescriptive under Section 2(e)(3). Applicant's goods are made in China and are so labelled. How do you think this came out? In re Tigerland-Foxland Ltd., Serial No. 85130889 (July 23, 2014) [not precedential].

According to applicant's translation statement, VENEZIA-MILANO means "Venice-Milan." Applicant feebly contended that the primary significance of its mark is not a generally known geographic location because there is no actual place called "Venice-Milan" and purchasers will not dissect the mark. The Board agreed that it should consider the mark as a whole, but it found that MILANO is the dominant feature of the mark because of its stronger connection with the involved goods and the fashion industry. Adding the word VENEZIA merely reinforces the perception that the goods emanate from a city in Italy.

Although there is no actual place known as "Venice-Milan," that fact does not detract from the primary significance of the mark: the mark names a geographic location that is "not obscure, minor, remote, or not likely to be connected with the goods." Taken together, Milan and Venice suggest that the goods originate in Italy, specifically Milan and/or Venice.

Applicant conceded that its goods are not made in Milan or Venice. Of course, there is a goods/place association between the mark and the goods because, as readily established by Examining Attorney Susan C. Hayash, Milan is known as a center for fashion and Venice is one of Italy's major ports and a famous tourist attraction. So consumers will mistakenly believe that the goods come from either Milan or Venice.

Finally, this mistaken belief is a material factor in the purchasing decision because Milan is famous for women's clothing and a substantial portion of consumers who care about fashion will be motivated to purchase applicant's goods in the belief that they come from Milan. The addition of Venice to the mark does not detract from its overall impression: "the reference to Milan is unmistakable."

Applicant maintained that consumers would not be deceived because "its mark, as used on the goods, includes a label that reads 'China.'" The Board pointed out, however that the additional matter on the label is not part of the applied-for mark. In short, the mark stands on its own. It also observed that the specimen label submitted by applicant included the phrase "designation Italy."

Finally, the Board noted applicant's claim of acquired distinctiveness as of July 2006. However, because the applied-for mark is ineligible for registration under Section 2(e)(3), Section 2(f) is not available to applicant. Section 2(f) states that a mark found to be primarily geographically deceptively misdescriptive may be registered only if it "became distinctive of the applicant's goods in commerce before the date of the enactment of the North American Free Trade Agreement Implementation Act" (i.e., prior to December 8, 1993).

And so the Board affirmed the refusal.

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Text Copyright John L. Welch 2014.