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.
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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.