Wednesday, January 25, 2012

TTAB Dismisses Section 2(e)(3) Petition for Cancellation of SWEDISH FIRESTEEL for Fire Igniters

Petitioner Ronald W. Fontaine sought to cancel a registration for the mark SWEDISH FIRESTEEL for "hand-operated fire igniter in the form of metal sticks with a holder and a tin, and hand-operated fire strikers" [SWEDISH disclaimed] on the ground that the mark is primarily geographically deceptively misdescriptive under Section 2(e)(3). Fontaine's petition went up in smoke, however, when he failed to satisfy the second element of the Section 2(e)(3) test. Ronald W. Fontaine v. Light My Fire, AB, Cancellation No. 92051304 (January 12, 2012) [not precedential].

A mark is primarily geographically deceptively misdescriptive if "(1) the primary significance of the mark is a generally known geographic location; (2) the consuming public is likely to believe the place identified by the mark indicates the origin of the goods bearing the mark (i.e., that a goods/place association exists), when in fact the goods do not come from that place; and (3) the misrepresentation would be a material factor in the consumer's decision to purchase the goods."

Prong 1: The Board agreed with Petitioner that the primary significance of the mark SWEDISH FIRESTEEL is geographical. The addition of FIRESTEEL to SWEDISH does not detract from the primary geographic significance of the mark.

Prong 2: The second element of the test raises two inquiries. As to the first inquiry - whether consumers will believe that the goods come from Sweden - Petitioner offered no evidence.

[P]etitioner has not proved that consumers associate the country of Sweden with the type of goods of respondent. The sole evidence petitioner can point to in the record is respondent’s admission that the Swedish military uses fire starter devices. This, by itself, is insufficient to establish a goods/place association.

As to the second inquiry under Prong 2 - whether the goods come from Sweden - Petitioner argued that because the "only essential part" of Respondent's device is not made in Sweden, then the entire product should be considered as not originating in Sweden: "Specifically, respondent contends that the flint rod is the 'only essential part' of respondent’s fire starter device because it is impossible to produce a spark in the absence of pyrophoric metals or ferrocerium."

The Board, however, found that each part of the device is equally important and essential, and that the five other component parts originate in Sweden: (1) striker, (2) striker handle, (3) flint handle, (4) lanyard, and (5) lock.

Moreover, Respondent is a Swedish company with headquarters, research facilities, and production facilities in Sweden. The finished (not Finnish - ed.) product is assembled in and distributed from Sweden. Therefore the Board concluded that Respondent's goods do originate in Sweden.

And so, having found that Petitioner Fontaine wholly failed to satisfy the second prong of the 2(e)(3) test, the Board declined to consider the third prong and instead dismissed the petition for cancellation.

TTABlog comment: Respondent's registration was more than five-years old when the petition for cancellation was filed [wrong! see below]. However, a registration more than five-years old may be cancelled on the ground of geographic deceptiveness. See Consorzio del Prosciutto di Parma v. Parma Sausage Products, Inc., 23 USPQ2d 1894 (TTAB 1992). [However, Parma is an old Section 2(a) deception case, not a 2(e)(3) case.]

TTABlog correction: Anne Gilson Lalonde has pointed out to me that the registration was not five-years old when the petition was filed. The Board's citation of the K-Swiss decision in footnote 1 is strange because it is simply irrelevant here: not only was the subject registration less than five-years old, but also there was no evidence that Respondent changed the geographic source of its goods after the registration issued. Furthermore, as Anne points out in her comments, it is not at all clear that a Section 2(e)(3) claim is available against a 5-year old registration!

Text Copyright John L. Welch 2012.


At 9:34 AM, Anonymous Anne Gilson LaLonde said...

Actually, it isn't entirely true that "a registration more than five-years old may be cancelled on the ground of geographic deceptiveness." Parma was a 2(a) case, straight deceptiveness but applied to a geographic mark. 2(a) marks CAN be cancelled at any time.
Now (post-NAFTA, 1993) the Board looks at geographically deceptive marks under 2(e)(3) and those are NOT subject to cancellation after five years. 15 USC 1064(3) doesn't mention 2(e)(3) as a ground under which a petition for cancellation may be filed at any time.
The whole subject area is a mess -- I just wrote about it and it's confusing and inconsistent.

At 11:46 AM, Blogger John L. Welch said...

Well, that's disturbing. The Board actually cited K-Swiss Inc. v. Swiss Army Brands, Inc., 58
USPQ2d 1540, 1542-1543 (TTAB 2001), for the proposition that “[A] registration more than five years
old can be cancelled on the ground of geographic deceptiveness if
a registrant, through its own actions, causes its mark to become
geographically deceptive subsequent to the issuance of the registration”). Since the case here did not involve a registrant who, after the registration issued, did something to cause its mark to violate 2(e)(3), I decide to cite Parma in my comment, which case K-Swiss relies on, because it was more on point. But I agree with you, Anne, that Parma is a 2(a) case and that Section 14 of the statute does not mention 2(e)(3) as a ground for cancellation after the fifth anniversary of a registration. So what's the story here? Should the case have been tossed out at the git-go?

At 1:18 PM, Anonymous Anne Gilson LaLonde said...

I checked the petition for cancellation, and the only ground for cancellation mentioned was 2(e)(3). Neither of the parties' briefs discussed whether 2(e)(3) was grounds for cancelling an incontestable registration -- in fact, defendant didn't mention 15 USC 1064 and petitioner only mentioned it in connection with arguing that it had standing.
The citation to K-Swiss doesn't make sense because there's no indication in the briefs that there had been any change of circumstance since the registration issued.
I suppose it's moot now, but in fact there was no reason to reach the merits.
If petitioner had added a 2(a) ground for deceptiveness, I think the Board might have had to consider it, though.


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