Friday, August 03, 2012

Precedential No. 24: TTAB Affirms Refusal of REAL RUSSIAN as Primarily Geographically Deceptively Misdescriptive of Vodka

Is there any reason why a precedential decision cannot be a WYHA? [i.e., "Would You Have Appealed?"] The recent BENNY GOODMAN decision is a candidate for that "honor." Here's another. The Board affirmed a refusal to register REAL RUSSIAN for vodka, finding it to be primarily geographically deceptively misdescriptive under Section 2(e)(3). In re Premiere Distillery, LLC, 103 USPQ2d 1483 (TTAB 2012) [precedential].

"To maintain a refusal under Section 2(e)(3), the Office must establish that (1) the primary significance of the mark is a generally known geographic location, (2) the relevant public would be likely to believe the place identified by the mark indicates the origin of the goods bearing the mark, 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. In re California Innovations Inc., 66 USPQ2d 1853, 1858 (Fed. Cir. 2003)."

Primary significance: Applicant Premiere contended that the primary significance of RUSSIAN is not a generally known geographic location because the definitions of record "include multiple meanings for the term 'Russian,' ... [and] geography is merely one of a number of meanings the term can have." The Board pointed out, however, that the meaning of RUSSIAN must be considered not in a pustota [Russian for vacuum, I think - ed.], but in the context of the goods. For vodka, RUSSIAN has a primarily geographic meaning. Alternatively, and feebly, Premiere asserted that RUSSIAN connotes the "style" of vodka, but the record lacked support for that contention. And so the Board found that the primary significance of REAL RUSSIAN used in connection with vodka is geographic.

Goods/place association: As to the requisite goods/place association, the Board noted that the goods do not emanate from Russia. [Premiere is located in a Chicago suburb]. "Not surprisingly, the evidence of record here overwhelmingly supports a finding that Russia is extremely well known for vodka."

Premiere argued that its labels would eliminate any possible misunderstanding because they include the wording “Hand Made in the U.S.A.” Of course, that fact is irrelevant, since the Board must make its determination based on the mark as set forth in the application.

Materiality: The evidence submitted by Examining Attorney Ramona Ortiga Palmer established that "vodka is an important product of Russia and that both the public in general, and vodka drinkers in particular, would be aware that Russia is well-known for vodka." In view of the demonstrated fame and reputation of Russian vodka, the Board may infer that "a substantial portion of consumers who encounter REAL RUSSIAN on applicant's vodka are likely to incorrectly believe that the vodka comes from Russia and that such mistaken belief would materially influence their decision to purchase the vodka."

And so the Board affirmed the refusal.

TTABlog comment: Really, should this case have been deemed precedential? Oh, and don't forget to read Anne Gilson Lalonde's article on deception, misdescription and materiality in trademark law. [TTABlogged here].

Text Copyright John L. Welch 2012.


At 9:49 AM, Anonymous Joe Dreitler said...

Simple answer, "no".
Is it even a trademark or a false (or true) product claim? If it's really made in Russia, it's a product claim, if not, seems like a 43a violation to me.


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