Thursday, January 28, 2016

TTAB Reverses 2(e)(3) Geographical Deceptiveness Refusal of "AUX ETAT UNIS" for Luggage

Yours truly, the TTABlogger, notched a victory in this appeal from a Section 2(e)(3) refusal to register the mark shown below for luggage and other Class 18 goods. The Board found that, although the phrase AUX ETATS UNIS refers to a generally known geographical place [can you guess what place?], the Examining Attorney failed to show that a substantial portion of the relevant consuming public would likely be deceived by the place name. In re Luvanis S.A., Serial No. 86294633 (January 26, 2015) [not precedential].

In order to establish a prima facie case that a mark is primarily geographically deceptive misdescriptive case under Section 2(e)(3), the USPTO must show that:

1) The primary significance of the mark is a generally known geographic place;

2) The goods or services do not originate in the place identified in the mark;

3) Purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark; and

4) The misrepresentation would be a material factor in a substantial portion of the relevant consumers’ decision to buy the goods or use the services. In re Spirits International, N.V., 563 F.3d 1347, 90 USPQ2d 1489, 1490-95 (Fed. Cir. 2009).

Applicant argued that "aux Etats Unis" would be translated as "to the United States," but the Board found that the phrase could also mean "in the United States." The Board concluded that the primary significance of the mark is a known geographic place, and so the first prong of the 2(e)(3) test was satisfied.

Applicant conceded that its goods would not originate in the United States, and so the second prong of the test was met. [Can a prong be met? Not without some pain, I think - ed.].

As to the third and fourth elements, none of the PTO's evidence "concerns the issue of whether a substantial portion of the relevant consuming public would likely be deceived by a non-English place name."

In cases under the doctrine of foreign equivalents, where the place name in the mark appears in a foreign language, the requirement that a substantial portion of the relevant consuming public would likely be deceived raises special issues. To make a determination about “a substantial portion” in such cases, the examining attorney must consider whether the foreign language place name would be recognizable as such to consumers who do not speak the foreign language, and/or whether consumers who speak the foreign language could constitute a substantial portion of the relevant consumers (e.g., because they are the “target audience”). Spirits, 563 F.3d at 1353, 90 USPQ2d at 1493; see Corporacion Habanos, S.A. v. Guantanamera Cigars Co., 102 USPQ2d 1085, 1097 (TTAB 2012).

The Board found nothing in the record from which to determine "whether (1) U.S. consumers who do not speak French would recognize 'aux Etats Unis' as referring to 'in the United States' or 'to the United States,' or (ii) U.S. consumers who speak French are a substantial portion of the relevant consuming public, and would be deceived by the asserted misrepresentation in the mark."

The Board also noted that the PTO had failed to show that the misrepresentation would be a material factor in the purchasing decisions of a substantial portion of the relevant consuming public.

And so the Board reversed the refusal.

Read comments and post your comment here.

TTABlog comment: The Spirits test under Section 2(e)(3) is stringent, particularly the third and fourth factors. When a mark for cigars sounds of Cuba, a 2(e)(3) refusal may stick because of the size of the Spanish-speaking population in this country and the desirability of Cuban cigars (see, for example, the GRAN HABANO case, TTABlogged here), but otherwise the Office has a tough row to hoe.

Text Copyright John L. Welch 2016.


At 7:54 AM, Anonymous Anonymous said...

Well argued. Could have gone either way, but reason, logic and lack of countervailing facts won the day.

At 8:40 AM, Anonymous Anonymous said...

Congrats on the win, John. The examining attorney handled this case very strangely, and frankly sloppily. As the Board wrote at the end, "In sum the Examining Attorney has not submitted evidence on a critical element of her refusal of a mark involving a foreign geographic term." Weird.

At 1:47 PM, Blogger Michael M. Ratoza said...

So, it appears that there is now one big exception for 2(e)(3) issues. That is, if the geographical mark is in a foreign language, then the chance that the examiner will hire a translation expert and conduct a foreign language survey basically assures that the 2(e)(3) refusal will be overturned. So, 2(e)(3) becomes a black hole from which everything can escape, so long as its in a foreign tongue. This decision certainly underscores the provincial bias that native English speakers have when it comes to the English language. A decision maker based in Europe would not have this same sort of language bias and would be more open to the concept of an average Joe understanding a foreign language.


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