Tuesday, July 19, 2016

"BJNI" Not Geographically Descriptive of Mineral Waters, Says TTAB

Have you ever heard of Bjni? Me neither. The Board reversed a Section 2(e)(2) refusal to register BJNI, in the stylized form shown below, finding the mark not primarily geographically descriptive of "mineral and carbonated waters." In re Vili Group Inc., Serial No. 86285733 (July 14, 2016) [not precedential].

The first prong of the standard test under Section 2(e)(2) requires that the primary significance of the mark be the name of a place generally known to the public. The Examining Attorney maintained that Bjni is a generally known geographic place, namely, Bjni, Armenia. Applicant did not dispute that Bjni is a geographic location, or that its goods originate in Bjni, but it contended that Bjni is not generally known and that Bjni is a village so small that consumers in this country "would not recognize it as indicating the geographical source of the actual water products to be sold under the BJNI name."

The Examining Attorney relied on a Wikipedia entry (here) describing Bjni as a village in Armenia with a population of just over 3000 people. The entry discusses Bjni's history and a medieval fortress and church, but makes no mention of mineral water. Travel websites mention the fortress and the church. Several mention mineral springs in Bjni, but only applicant's website (here) focuses on Bjni as a village known for its mineral spring water.

The Board found that the record evidence failed to support the refusal because it did not establish that Bjni is a generally known geographic location. Nearly all the evidence came from obscure foreign sources and was not probative of consumer perceptions in this country.

The brief Wikipedia entry has some probative value, but without additional evidence the Board could not find that Bjni is a generally known location. See In re Newbridge Cutlery, 113 USPQ2d 1445, 1450 (Fed. Cir. 2015) (the record must include substantial evidence to support a conclusion that the mark identifies a place "known generally to the relevant American public.").

And so the Board reversed the refusal.

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2016.


At 8:03 AM, Anonymous Anonymous said...

Many examining attorneys have a blind spot when it comes to the "generally known" prong of the 2(e)(2) test. They believe that if they can find some mentions of the geographic place online, that's good enough. It seems to me the Office would be wise to conduct some internal training on this point.

At 8:50 AM, Anonymous Anonymous said...

I've come to question the degree to which examining attorneys use the internet to find connections between all sorts of things. In particular when assessing the relatedness of goods.

At 10:33 AM, Anonymous joe dreitler said...

Agree with both Anonymous'. There were a few oddball refusals when the Examiners had to rely upon Gazetteers and atlases. It got much worse when Lexis/Nexis came along. Today, it's become a matter of plugging the word into Google and finding some remote village and, apparently, not understanding the purpose of Section 2(e)(2). If there is a water company in this village selling mineral water under the village name to the US, they can come forward and oppose it. If not, US law does not protect every geographic indication against trademark registration.

At 12:00 PM, Anonymous Anonymous said...

Related to the above comments, I think that there is so much information available now with the various online sources that the connections between the marks and their meanings inevitably get found on the internet and once the examiner has that evidence, they feel obligated to assert it. Moreover, the evidence could be so much more available that the examiner is misled about how "generally known" a place is. Evidence like Wikipedia and many other sites an internet search would yield was likely not discoverable that easily 10 years ago.

A refusal like this is issued by the examiner probably for "CYA" and even if the examiner knows the refusal is a weak one to defend, they are likely inclined to proceed with maintaining the refusal until their decision is made for them by a higher authority. True, the examiners may not completely understand the meaning of "generally known" and be confident enough in their analysis of the case to understand that the record supports approving the application despite evidence of a geographic meaning to the mark.


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