TTAB Finds ARCATA Not Primarily Geographically Deceptively Misdescriptive of Wine

The Board reversed a Section 2(e)(3) refusal of ARCATA for wine, finding the mark not primarily geographically deceptively midescriptive of the goods. The evidence established that Arcata is a city in California that is neither obscure nor remote, and is the locus of several wineries. The question was whether "a consumer's misimpression that Applicant's goods originate in Arcata would be a material factor in his or her decision to purchase the goods." In re D’Andrea Family Limited Partnership, Serial No. 85834204 (October 15, 2014) [not precedential].

A mark is primarily geographically deceptively misdescriptive if:

(1) the primary significance of the mark is a generally known geographic location;

(2) the consuming public is likely to believe the place identified indicates the origin of the goods, when in fact the goods do not come from that place; and

(3) the misrepresentation would be a material factor in a consumer's decision to purchase the goods.

Here, the key issue was the third one: materiality. In order to establish materiality, the USPTO must show that "a substantial portion of the relevant consumers would be materially influenced in the decision to purchase the product or service by the geographic meaning of the mark."

Reviewing relevant precedents, the Board considered whether the PTO has shown "that Arcata is 'noted for' wine; that wine is a 'principal product' of Arcata; that wine is a product 'traditionally originating' in Arcada; or that for, any other reason, a substantial portion of customers for wine would be materially influenced in the decision to purchase wine by a misrepresentation that the goods originate in Arcata."

Arcata is a city of 16,000 persons, located in Humboldt County in Northwestern California. It is a college town, the home of Humboldt State University. For many years, timber dominated the economy; today a cannabis economy employs many in the area.

The Examining Attorney contended that Humboldt County is known for its distinctive wine, and that the characteristics of Humboldt County wine would be attributed to wines from Arcata. The Board observed, however, that the evidence did not support the Examining Attorney's argument. Humboldt County is not known for its wine; at most it has one viticultural area where a few dozen wineries are struggling for recognition. The three wineries located in Arcata obtain their grapes from other places. Customers would therefore not be induced to purchase applicant's wine in the belief that it was made with grapes grown in Arcata.

The Board declined to decide whether the name "Humboldt" would induce consumers to purchase wine. But the fact that Arcata is located in Humboldt County "is insufficient to persuade us that the name ARCATA would induce customers to purchase wine."

Having carefully reviewed the record, we see no indication that Arcata is "noted for" wine, that wine is a "principal product" of Arcata, or that wine is a product that customers perceive as “traditionally originating” in Arcata. Arcata does not appear to be a suitable place for growing wine grapes. Although there are three wineries located in Arcata, they acknowledge to the market (or the marketplace takes note) that their wine is made from grapes that are grown elsewhere. Although Arcata is located in Humboldt County, a place with a developing viticultural industry, Arcata itself is known as a university town.

And so the Board reversed the refusal.

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TTABlog comment: For a through discussion of Section 2(e)(3), see Anne Gilson LaLonde's article entitle "You Are Not Going to Believe This! Deception, Misdescription and Materiality in Trademark Law," 102 TMR 883 (May-June 2012) [pdf here].

Text Copyright John L. Welch 2014.