Wednesday, September 09, 2009

Finding Double Entendre, TTAB Reverses 2(e)(2) Refusal of "PROFUMO DE FIRENZE" for Perfume

Reversing a Section 2(e)(2) refusal, the Board found the mark shown below to be not primarily geographically descriptive of perfumes and cosmetics. It ruled that although the mark may be understood as describing that Applicant's goods are made in Florence, it could also have a non-geographical meaning as "the scent (or sweet smell) of Florence." In re Atelier Profumo Artistico Firenze S.r.L., Serial No. 77212553 (August 26, 2009) [not precedential].

The first requirement for a Section 2(e)(2) refusal is that the primary significance of the mark be the name of a place generally known to the public. The Board pointed out that words in a modern foreign language like Italian are translated into English in order to determine their descriptiveness.

There was no dispute that "de Firenze" translates into English as "of Florence." The record established that Florence is a well-known city and province, the capital city of the Italian region of Tuscany, and is a commercial, industrial, and tourist center.

Applicant argued that "when the term 'profumo' is followed by 'di' and a noun such as a 'rose' (or in this particular case, the city of Florence) ... the term 'profumo' will take on the more 'sensory-related' translation of the word as opposed to the 'product-related' translation of the word." In other words, consumers will perceive the mark "in a manner that is consistent with the 'scent of Florence' as opposed to 'bottles of perfume originating from Florence." The Board found that Applicant's argument passed the olfactory test:

[t]he evidence shows that ... one meaning of the mark as a whole is the sensory connotation. This sensory connotation is nebulous inasmuch as it remains unclear whether the “scent” or “sweet smell” of Florence is to be taken literally, i.e., the goods may actually attempt to replicate odors of the city, in the manner of “the scent of the sea,” or to be interpreted as giving a “flavor” of the city, i.e., suggesting the goods will conjure images or “the aura” of the historic city of Florence. In either instance, we find this connotation takes the mark out of the geographically descriptive realm.

The Board found that "at the very least the mark must be viewed as having a double entendre, and is therefore registrable." Of course, any doubt as to the primary meaning of the mark must be resolved in Applicant's favor.

The Board therefore reversed the refusal to register.

TTABlog comment: I've never been to Florence, so I can only imagine what the "odors of the city" might smell like. If Applicant's goods did replicate the odors of the city, wouldn't the mark, alternatively, be merely descriptive under Section 2(e)(1)? The Examining Attorney, however, did not make that alternative refusal.

It seems unlikely to me that a purchaser of a bottle of perfume bearing the mark PROFUMO DI FIORENZE would not translate the phrase as "perfume of Florence." But then, I'm not a TTAB judge.

Text Copyright John L. Welch 2009.


At 5:04 PM, Anonymous Franco Serafini said...

I am fluent in Italian, and PROFUMO DI FIRENZE can be equally translated as "good smell of Florence" or "perfume from Florence." FWIW, I do not find that mark as descriptive in either case, because I am not aware that Florence has any specific smell (I have been to Florence many times) nor am I aware of any type of perfume associated with the name of that city. However, since all doubts are to be solved in favor of Applicant, registration seems have been appropriate.


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