Tuesday, March 08, 2011

WYHA? TTAB finds NAPA FOODS Primarily Geographically Deceptively Misdescriptive for Food

A United Kingdom company called Napa Valley Foods, Inc., sought to register the mark NAPA FOODS (in standard character and design form) for various food items, relying on Section 44(e) and four Nigerian registrations. Examining Attorney Amy E. Hella refused registration under Section 2(e)(3) of the Act. The Board affirmed. Would you have appealed? In re Napa Valley Foods Inc., Serial Nos. 77627932, 77627933, 77627934 and 77627935 (February 22, 2011) [not precedential].

Applicant did not dispute the geographic descriptiveness of "Napa Valley," but asserted that "Napa" is not the same thing:

Applicant relies on definitions of “napa” as meaning “a very soft glove leather made from the skin of a sheep, kid or goat” and “Chinese cabbage.” Applicant also points out that NAPA is an acronym for National Academy of Public Administration and National Association of Performing Artists, and that Google searches for Napa retrieve references to an auto care chain, the National Academy of Public Administration, National Asphalt Pavement Association, National Association for the Practice of Anthropology and software systems. [What the heck is the National Association for the Practice of Anthropology and software systems? - ed/]

Applicant further stated that it chose NAPA because it is "easy to pronounce in many languages." [So is "baloney" - ed.]

The Board said "baloney." Applicant's argument regarding ease of pronunciation was "disingenuous" in view of its corporate name. Moreover, when used in connection with the identified good items, NAPA would not be given the other meanings that Applicant offered.

The Examining Attorney's evidence regarding the fame of the Napa Valley for food and wine persuaded the Board that consumers would understand NAPA to refer to the geographic location, Napa Valley, California. Thus the first prong of the 2(e)(3) test was met: the mark's primary significance is a generally known geographic location.

As to the second prong, there was no dispute that Applicant's goods do not come from the Napa Valley. As to the requisite goods/place association, Applicant argued that the Examining Attorney did not show that the Napa Valley is well known for the specific goods in the applications. However, the Board found that an association had been shown between Napa and at least some of the goods in each application: canned fruits, olive oil, seasonings, salad dressings, and spices. Moreover, even more generally:

Because applicant’s food items are related to the restaurant services for which Napa Valley is famous and are related to the food items sold in Napa, consumers are likely to believe that the source of the goods identified in applicant’s applications is Napa Valley.

Therefore, the Board found a goods/place association between the goods and the place named in the mark.

Thirdly, a Section 2(e)(3) refusal requires that the misrepresentation is a material factor in the consumer's decision. The Board ruled that the Examining Attorney had met this burden.

The record is replete with references to Napa being a food mecca, and we have already quoted many of the articles and websites in this opinion. A finding that a geographic place is noted for or renowned for goods supports a finding of materiality. There is no question that Napa is famous for food, and because of this renown, consumers are likely to buy food bearing the NAPA mark because they think that the goods come from Napa Valley.

And so the Board affirmed the refusals to register.

TTABlog note: I don't think there was any way this application would survive an appeal, do you?

Text Copyright John L. Welch.


At 10:08 AM, Anonymous Anonymous said...

No way it would have survived, particularly with the "valley" design in the composite marks, undercuts their "gloves and cabbage" argument.


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