Friday, December 28, 2007

TTAB Affirms 2(e)(3) Refusal of "FRENCH & FLIRTY" as Primarily Geographically Deceptively Misdescriptive of Lingerie

Rejecting Applicant's flimsy assertions that "French" means "sexy" and that purchasers buy lingerie based on "look and feel" rather than geographic origin, the Board found the mark FRENCH & FLIRTY to be primarily geographically deceptively misdescriptive for lingerie. It therefore affirmed the PTO's Section 2(e)(3) refusal to register. In re Vanity Fair, Inc., Serial No. 78515219 (December 17, 2007) [not precedential].

A proper Section 2(e)(3) requires proof of three elements: (1) the primary significance of the mark is a generally known geographic location; (2) the consuming public is likely to believe that the goods originate in that location (i.e., a goods-place association exists), when in fact the goods do not, and (3) the misrepresentation would be material to the consumer's decision to purchase the goods. In re California Innovations, Inc., 66 USPQ2d 1853, 1858 (Fed Cir. 2003).

As to the first factor, the Board found that "the most commonly understood connotation of the word 'French' is geographic." Applicant Vanity Fair argued that "French" is here used euphemistically to mean "sexy," and it submitted a Wikipedia definition that defines the word "french" as "stinky, over-stated or rated, as well as those things that are illegal, immoral or just generally undesirable." The Wikipedia entry also noted that this meaning is primarily used by "native speakers in the UK and surprisingly often in the U.S. as well." [TTABlog comment: more about this Wikipedia entry below].

The Board, however, agreed with Examining Attorney Richard A. Straser that "the overall commercial impression created by the mark FRENCH & FLIRTY is more along the lines of 'French origin and playful.'" The PTO's evidence showed that the word "French" is used in a geographic manner in connection with lingerie. And the addition of the word "flirty" does not "detract from or obviate the overall geographic connotation created by the word 'French."

As to the second factor, the evidence established that "consumers would identify France as a known source" for lingerie. Moreover, Applicant did not deny that its goods do not come from France.

Vanity Fair argued that "the look and feel of the lingerie" is the important factor in the purchasing decision, and that "the idea that a purchaser will buy applicant's lingerie because the goods are thought to originate in France is not believable." The Board, however, observed that lingerie is "specifically touted as being from France or as 'French lingerie.'" Thus France is a known source of lingerie, and a good-place association exists.

Finally, as to the third element of Section 2(e)(3), the Board pointed to the evidence that France is touted as a source of lingerie and that French lingerie is carried in "luxury" or "boutique"' retail establishments, and thus is presumably thought to be of a higher quality and more desirable. Therefore, the geographic origin of the goods is indeed material to the purchasing decision.

TTABlog comment: Applicant submitted its Wikipedia definition of "French" with its request for reconsideration, and the Examining Attorney thus had an opportunity to "rebut or question the accuracy of the entry." Consequently, under In re IP Carrier Consulting Group, 84 USPQ2d 1028 (TTAB 2007) [TTABlogged here], the Board gave consideration to the definition, but with "the recognition of the limitations inherent with Wikipedia (e.g., that anyone can edit it and submit intentionally false or erroneous information)."

The definition of "French" submitted by Applicant seems to be a good example of why the Board has its approach to Wikipedia evidence completely backward. What is the PTO Examining Attorney supposed to do to rebut or question the accuracy of that entry? How many dictionary entries with merely geographic definitions for "French" will suffice? Why should the Board presume that the Wikipedia entry is correct? Shouldn't the presumption be that Wikipedia evidence is not trustworthy unless corroborated? And if corroborated, why not just rely on the corroborating evidence, and forget the Wikipedia evidence?

Text Copyright John L. Welch 2007.


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