Thursday, June 27, 2019

WYHA? TTAB Affirms Geographically Deceptive Refusal for Hong Kong-Based Kitchenware Company’s TODDLER COPENHAGEN Mark

[This guest post was written by Amanda B. Slade, an associate in the Trademark Group at Wolf, Greenfield & Sacks, P.C.]. The Board upheld Section 2(e)(3)  refusals of the mark shown here (with COPENHAGEN disclaimed), finding the mark to be primarily geographically deceptively misdescriptive of “tableware, namely, forks, knives, spoons, razors; hunting knives” in Class 8 and “household or kitchen utensils and containers; glassware, porcelain and earthenware not included in other classes” in Class 21. On appeal, Applicant Creation Power argued that because the “‘Copenhagen style’ is well-understood in design,” the mark does not refer to the “geographic location itself” so as to deceive consumers. The Board was unconvinced and unanimously affirmed the refusals to register. In re Creation Power Limited, Serial Nos. 87229478 & 87229760 (June 19, 2019) [not precedential] (Opinion by Judge David K. Heasley).

Section 2(e)(3) prohibits registration of a mark that, “when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them.” Marks that meet the following four criteria are barred from registration:

(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 Compania de Licores Internacionales S.A., 102 U.S.P.Q.2d 1841, 1843 (TTAB 2012); TMEP § 1210.05(b) (Oct. 2018).

The first two elements undoubtedly cut against Applicant. The Board stated, “Under the first element of the Section 2(e)(3) refusal, it is undisputed that the primary significance of Applicant’s mark is that of a generally known geographic location, Copenhagen.” In terms of the second element, Applicant conceded that “its identified goods do not originate from Copenhagen.”

Regarding the third element, demonstrating “the goods-place association often requires little more than a showing that the consumer identifies the place as a known source of the product.” In re Les Halles De Paris J.V., 334 F.3d 1371, 67 U.S.P.Q.2d 1539, 1541 (Fed. Cir. 2003). The Examining Attorney submitted persuasive evidence “showing that Copenhagen is a known source of designer cutlery, tableware, glassware, porcelain ware and dinnerware products―all of which are part of Copenhagen’s broader reputation as a design capital.” For example, the late Anthony Bourdain described Copenhagen as “probably the center of the designer goods universe . . . Copenhagen is rich with design-led stores selling trendy lights, ingenious kitchenware, cheerful home furnishings and exquisite glass and ceramics.” In particular, he referenced Royal Copenhagen, whose well-known blue and white hand-painted dinnerware is shown below.

The Board found that this evidence was sufficient to establish a prima facie goods-place association. Applicant failed to rebut this showing and prove that “the public would not actually believe the goods derive from the geographic location identified by the mark.” In re Save Venice N.Y., Inc., 259 F.3d 1346, 59 U.S.P.Q.2d 1778, 1783 (Fed. Cir. 2001). Applicant did not successfully provide any evidence supporting its position that the “Copenhagen” or Nordic style of products was well-known internationally and that consumers would interpret the mark accordingly.

Finally, the Board concluded that the Examining Attorney established materiality (i.e. that a “substantial portion of relevant consumers is likely to be deceived by the mark’s misrepresentation of a goods/place association.”) In re Miracle Tuesday, LLC, 695 F.3d 1339, 104 U.S.P.Q.2d 1330, 1334 (Fed. Cir. 2012) (quoting In re Spirits Int’l N.V., 563 F.3d 1347, 90 U.S.P.Q.2d 1489, 1493 (Fed. Cir. 2009)). Again, Applicant contended that consumers would recognize a “Copenhagen style” and would not automatically assume that the goods emanate from Copenhagen. The Board stated that, in line with past appeals, this “style” argument does little to counter the materiality of a geographic designation. The Board reiterated that an association between a place and a particular style “may be made precisely because of the primary significance” of a term as a location. In re Wada, 48 U.S.P.Q.2d 1689, 1691 n.5 (TTAB 1998). Hence, all four elements supported the Examining Attorney’s position, and the Board agreed that the mark was primarily geographically deceptively misdescriptive under Section 2(e)(3).

Practice Tip: While Applicant had attached three exhibits to its appeal brief, the Board would not consider them. Per 37 CFR § 2.142(d), “exhibits attached to a brief that were not made of record during examination are untimely, and will not be considered.” Nonetheless, the Board noted that in this case, even if the exhibits had been considered, they would not have affected the outcome.

Read comments and post your comment here.

Text Copyright Amanda B. Slade 2019.


At 1:26 PM, Blogger Bob Cumbow said...

Wait a minute, if they didn't consider those other exhibits, how can they know they would not have affected the outcome? I hate it when courts and boards say things like that. But nevertheless, rightly decided: Copenhagen is a "style" of kitchenware in the same way that Champagne is a style of wine and Scotch is a style of whisky. You can't use any of those words as trademarks for goods that don't come from there.

At 1:30 PM, Blogger John L. Welch said...

I think the Board read them, but decided not to include them as evidence in its deliberations - i.e., didn't "consider" them.


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