Friday, January 16, 2015

CAFC Reverses TTAB: NEWBRIDGE HOME Not Geographically Descriptive of Cutlery

The CAFC reversed the TTAB's decision [TTABlogged here] upholding a Section 2(e)(2) refusal to register the mark NEWBRIDGE HOME for "silverware, jewelry, and kitchen goods" [HOME disclaimed]. After a lengthy discussion of the history and development of refusals to register geographical names, the court ruled that the USPTO had failed to satisfy the first prong of the applicable test: that the place named by the mark be generally known to the relevant consuming public. In re The Newbridge Cutlery Co., 113 USPQ2d 1445 (Fed. Cir. 2015) [precedential].

In order to refuse registration on the ground that a mark is primarily geographically descriptive, the USPTO must show (1) that the mark is the name of a place that is generally known to the public, (2) that the public would make a goods/place association in that it would believe that the involved goods originate in that place, and (3) that the involved goods come from that place. Here, the USPTO failed to meet the first requirement.

The TTAB concluded that Newbridge is a place generally known to the public because (1) it is the largest town in County Kildare and the seventeenth largest in the Republic of Ireland; (2) it is listed in the Columbia Gazetteer of the World; and (3) a number of websites describe Newbridge as a "large commercial town" with a "silverware visitor centre," as well as museums, gardens, historical battle sites, and a famous horse racing track.

The CAFC ruled that "[t]he conclusion that Newbridge, Ireland, a town of less than twenty thousand people, is a place known generally to the relevant American public is not supported by substantial evidence." The fact that Newbridge is the second largest town in its county and the seventeenth largest in Ireland reveals nothing about the perception of the American consumer, nor was there any evidence that the consumer would be familiar with the locations listed in the gazetteer. Similarly, listings on websites mean little because the Internet contains enormous amounts of information, and there was no evidence that the American consumer "would have any meaningful knowledge of all of the locations mentioned in the websites cited by the PTO."

Moreover a place is not necessarily "generally known" because the purchaser is informed that the mark is the name of the place. [E.g., AYINGER BIER for beer, even though the label showed the brewery to be located in the obscure location of Aying, Germany]. And the fact that "Newbridge" has other meanings, some geographical, also makes it less likely that Newbridge, Ireland is generally known as the name of a place.

The CAFC concluded that the evidence as a whole suggested that Newbridge, Ireland is not generally known. Therefore the first prong of the Section 2(e) test was not met. The court found it unnecessary to address the issue of goods/place association.

Read comments and post your comments here.

TTABlog note: Given its lack of investigatory resources, what proof could the USPTO have mustered to establish that Newbridge is a generally known place in this country?

Text Copyright John L. Welch 2015.


At 8:08 AM, Anonymous Jeff Handelsman said...

The Examiner could not muster any evidence because Newbridge is NOT a generally known geographic location to the average American consumer. Examiner's seem to think if there is information on a location on the internet, it follows that the location is "generally known". CAFC got this one right.

At 8:08 AM, Anonymous Jeff Handelsman said...

The Examiner could not muster any evidence because Newbridge is NOT a generally known geographic location to the average American consumer. Examiner's seem to think if there is information on a location on the internet, it follows that the location is "generally known". CAFC got this one right.

At 8:41 AM, Anonymous Paul Reidl said...

John, the absence of evidence is the absence of evidence. It should not be excused by the difficulty of obtaining it. I've had that argument made by the PTO in briefs to the TTAB: "the burden of obtaining evidence is too heavy." But to me that begs the question because it assumes that if the burden was not so heavy there actually would be evidence to support the PTO's case. I would argue that with the internet, Examining Attorneys have become very adept at gathering evidence, so much so that many applications that would have been registered easily 20 years ago are now regularly refused -- some on rather shaky grounds -- precisely because the Examining Attorneys have gathered "evidence.".

At 8:58 AM, Blogger John L. Welch said...

Guys, I'm asking a theoretical question. I'm not suggesting that the PTO be excused from providing evidence to support the refusal. My point is, assuming the evidence is out there, what is it that the CAFC would consider sufficient? Ten gazetteers? Or would only a survey suffice (which, of course, the EA could not provide).

At 9:55 AM, Anonymous joe dreitler said...

John, you're assuming that there IS evidence out there. And I think the CAFC got it right saying that finding an internet reference or gazetteer entry makes a place well know. I'm 1 person, but regularly take my vacations in Ireland.I may have driven through this little town, but I don't remember it and if I did there was nothing that trumpeted it as the home of anything in particular. I suspect you're asking the question which says of course the PTO can't do a survey, so what is their recourse? No easy answer but it ought to be obvious. Waterford IS famous for glassware and crystal. And there is ample easily available evidence to show that. That is the point - examiners need to be told that finding a couple of entries for a small town in Ireland (not known for much of anything) on the internet should not be a bar to registration in the US. That is not the purpose of the bar to registration and we need to go back to the reason for it in the first place before refusing.

At 1:44 PM, Anonymous Anonymous said...

Agreed--I have spent time going back and forth with Examiners over whether the 29th largest town in a foreign country is generally known. They believe that since there is a Wikipedia entry, it must be a generally known place.

At 3:33 PM, Anonymous Anonymous said...

John, there is no quantitative answer to your theoretical query. Perhaps, ten Gazetteer entries will suffice in some cases, and in some, they may not.
The bottom line is that if a locale is actually well-known to the public, there will be ample references to the place (showing an increased likelihood of familiarity with the locale) in popular media. There will not be a heavy, great, or insurmountable burden on the Examiner. More than likely, if a locale qualifies for being "generally known", a Wikipedia or Gazetteer entry will not even be required. Indeed, a geographic descriptiveness rejection should be reserved for only such locales. In the present case, a Gazetteer entry, a sprinkling of Irish websites and a few passing references (not any in-depth treatment) in provincial newspapers do not lead to the conclusion that the Irish locale is "generally" known to the public. A rejection based on that evidence is a misreading of the statutory requirement and was, as the CAFC has confirmed, improper.
Note: There were other grounds for reversal, which are not discussed above.

At 6:35 PM, Anonymous Anonymous said...

Two TTAB reversals by the CAFC in one month; both precedential decisions by Judge Linn. The beginning of a trend?


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