TTAB Reverses Section 2(e)(3) Geographical Deceptiveness Refusal of LAROMANA for Brown Sugar

The Board reversed a Section 2(e)(3) refusal to register the mark LAROMANA for "brown sugar," finding the mark not to be primarily geographically deceptively misdescriptive. Although the Board agreed with the USPTO that Laromana is a known geographic location and that consumers would believe the misrepresentation that the goods come from that place, the evidence was insufficient to show that the misrepresentation would be material to the purchasing decision. In re Marcos A. Castillo, Serial No. 87117266 (May 11, 2018) [not precedential] (Opinion by Judge Marc A. Bergsman).

The Section 2(e)(3) bar to registration requires an affirmative answer to each of the following three questions (In re Miracle Tuesday LLC, 104 USPQ2d 1330, 1332 (Fed. Cir. 2012):

1. Is “the primary significance of the mark … a generally known geographic location?”;

2. Is “the consuming public … likely to believe the place identified by the mark indicates the origin of the goods bearing the mark, when in fact the goods do not come from that place?”; and

3. Would “the misrepresentation [be] a material factor in the consumer’s decision” to purchase the goods?

Primary significance? The examining attorney submitted evidence showing that La Romana is a province in the Dominican Republic along the Caribbean Sea coast, as well as the major port city of the La Romana province and the site of several resort hotels. The Board noted that the spelling LAROMANA rather than La Romana (two words) was irrelevant in the Section 2(e)(3) analysis.

Applicant Castillo submitted a translation of the mark as "THE ROMAN" and asserted that, because Spanish is widely spoken in the USA, this is the primary significance of the mark. The Board, however, pointed out that the meaning of a mark must be considered in the context of the goods, and it therefore rejected Castillo's argument, noting that there was no evidence that Senor Castillo markets brown sugar using Roman imagery:

While the term LAROMANA may have a different connotation depending on context, in the context of brown sugar, there is no allusion to the alternative meaning of “The Roman” particularly where, as here, the evidence regarding the meaning of LAROMANA as “The Roman” is so thin.

Believable misrepresentation? It is enough for the required "goods-place association" that the consumer identifies the place as a known source of the product. The evidence established that consumers recognize La Romana as a source of sugar: the economy of La Romana is driven by sugar and tourism. Castillo admitted that his sugar did not have any connection with La Romana. The Board therefore found that the evidence established a goods/place association.

Materiality?: Materiality is key to proving deceptiveness. It may be proven by showing that the place named is well known for the goods, or that the goods are a principal product of the place named, or the goods are the traditional products of the place named or an expansion thereof.

The Board found that "[a]lthough the evidence demonstrates that sugar is a principal product of La Romana, the evidence does not demonstrate the consumers are interested in purchasing sugar from La Romana or that the origin of sugar has any role in their purchasing decision." There was no evidence that La Romana was famous or well known for sugar. Nor was there evidence indicating what factors consumers consider when they buy sugar. "[T]he evidence of record does not demonstrate that a significant portion, or any portion, of the relevant consumers would be influenced, let alone materially influenced, in the decision to purchase brown sugar by the geographic meaning of LAROMANA."

Conclusion: The Board reversed the refusal.

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Text Copyright John L. Welch 2018.