Thursday, June 18, 2020

TTAB Finds KOTA JAPAN Primarily Geographically Deceptively Misdescriptive for Knife Sharpening Tools

The Board affirmed a Section 2(e)(3) refusal of the mark KOTA JAPAN for "hand-operated sharpening tools and instruments; whetstones," finding the mark to be primarily geographically deceptively misdescriptive of the goods. Applicant contended that the distinctive term KOTA (having no known meaning on the record) is the dominant element of the mark and therefore the mark as a whole does not violate Section 2(e)(3). The Board disagreed. In re Grade-A-Global LLC, Serial No. 88003141 (June 16, 2020) [not precedential] (Opinion by Judge Peter W. Cataldo).

In determining whether a mark runs afoul of Section 2(e)(3), the Board asks three questions. If the answer is yes to all three, then the mark is primarily geographically deceptively misdescriptive and registration is barred.

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? [quoting In re Cal. Innovations, Inc., 66 USPQ2d at 1856].

As to the first question, there was no evidence of record that KOTA has any meaning. However, JAPAN "is hardly an obscure place to reasonably informed consumers in the United States, but rather denotes a well-known geographic location." The Board observed that "it is not necessary for every component of a mark to be geographically deceptive in order to satisfy the first part of the test under Section 2(e)(3) articulated in Cal. Innovations." (E.g., THE VENICE COLLECTION, NEW YORK WAYS GALLERY, HAVANA CLIPPER (rum)).

Applicant relied on; In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738 (TTAB 2016) in arguing that "[t]he inclusion of a distinctive term in combination with a geographic term will operate to prevent the mark from having a primary significance that is geographic," but the Board found that case to be distinguishable. In Morinaga, the Board reversed a Section 2(e)(3) refusal to register the mark shown below, for milk products, finding the mark not primarily geographically deceptively misdescriptive of the goods. The USPTO focused on the word SEATTLE in the mark, but the Board concluded that SEATTLE "plays a relatively minor role visually, but more importantly, it is part of the phrase THE MOUNTAIN OF SEATTLE, which appears at the base of a mountain, all of which is underneath the large and dominant wording MT. RANIER."

Although Seattle is a recognized place, the Board found that consumers would not likely consider it to indicate the origin of the goods. Here, however, the mark at issue consists of two terms in standard characters that may be displayed in the same size. There was nothing in the record suggesting that KOTA detracts from the geographical significance of Japan, nor does KOTA modify JAPAN is a way that would cause consumers to fail to recognize that significance. The Board therefore found that "KOTA JAPAN is a generally known geographic place."

As to the second question, the USPTO may establish a goods-place association with "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 USPQ2d 1539, 1541 (Fed. Cir. 2003). Applicant acknowledged that the goods do not originate in Japan.Examining Attorney Daniel F. Capshaw submitted excerpts from a number of websites establishing that Japan is "famous for centuries in producing, inter alia, high-quality, sought-after knives, knife sharpeners and whetstones, particularly water stones."

Finally, as to the third element, the evidence showed that consumers are interested in purchasing sharpening stones from JAPAN due to the quality of those products, and thus the geographic origin of the goods plays a role in the purchasing decision. "Indeed, from the record on appeal we draw an inference that the geographic misrepresentation is a material factor in the purchasing decision, based upon a “heightened” association between the goods and the location. In re Les Halles De Paris J.V., 67 USPQ2d at 1542 (the Patent and Trademark Office may raise an inference of materiality with evidence that the place is famous as a source of the goods at issue)." Applicant did not contest the issue of materiality.

All three prongs of the Section 2(e)(3) test having been met, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Have you ever met a prong? Is this a WYHA?

Text Copyright John L. Welch 2020.


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