Friday, February 08, 2008

Precedential No. 4: TTAB Affirms Triple Refusal of "NORMANDIE CAMEMBERT" for Cheese

Applicant, which lost the NAPOLEON BRIE case last October (TTABlogged here), racked up another "L" before the TTAB. This time it hit the TTAB trifecta when the Board affirmed three refusals to register the mark NORMANDIE CAMEMBERT for cheese. Can you guess what the three grounds were? In re, Inc., 85 USPQ2d 1917 (TTAB 2008) [precedential].

TTABlogger in Normandy (2005)

Well, I doubt you would have guessed the first one: Applicant failed to comply with the PTO's requirement under Rule 2.61(b) for further information as to the geographic origin of the mark. In fact, "applicant failed to even acknowledge the requirement, much less comply with it." [With regard to this totally avoidable refusal, see my article entitled "Six Potential Pitfalls in Trademark Prosecution," and particularly part 5 thereof, entitled, "When the Examining Attorney Says Jump ...."].

In addition to resulting in a refusal under Rule 2.61(b), Applicant's failure to comply with the PTO's demand led, more or less, to the two other refusals . In light of Applicant's failure to respond, the Board proceeded to presume that Applicant's goods "in fact originate or will originate in or from the place named in the mark," and with respect to the alternative Section 2(e)(3) refusal, to alternatively presume that "applicant's goods do not or will not originate in or from the place named in the mark."

With those presumptions in place, the Board then considered the 2(e)(2) and 2(e)(3) refusals. [You may have guessed one of these grounds].

As to 2(e)(2), the Board found the primary significance of NORMANDIE CAMEMBERT to be a generally-known geographic place, i.e., Normandy, France. It noted that "Normandie" is the French spelling of "Normandy," and that camembert is a generic term for a type of cheese. Applicant argued that the primary significance of NORMANDIE, because of the spelling, is the former ocean liner SS NORMANDIE, but that argument sailed nowhere.

The Board next found that a goods/place association exists between the goods and Normandy. If one assumes that Applicant's goods come from Normandy, then a goods/place association may be presumed, but in any event the evidence established that Normandy is famous for cheese, and for camembert in particular.

And so the Board affirmed the Section 2(e)(2) refusal.

Turning to the 2(e)(3) refusal, the Board presumed that Applicant's goods do not originate in Normandy, France. The remaining question was simple: whether the misrepresentation of the origin of the goods by Applicant's mark is or would be material to the purchasing decision. The evidence established that "cheese is a principal product of Normandy and that Normandy is famous for its cheeses, including its Camembert cheese," which was sufficient to satisfy the materiality requirement of Section 2(e)(3).

The Board therefore affirmed all three refusals.

Text Copyright John L. Welch 2008.


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