Tuesday, March 05, 2013

TTAB Affirms Deceptiveness Refusal of "VALENCIA" for Rice

Less than two months after oral hearing, the Board affirmed a Section 2(a) refusal of the mark shown below, finding it to be deceptive for "enriched rice; rice; rice flour." The PTO's evidence showed that "Valencia" connotes a type of rice that has particular qualities that make it suitable for certain kinds of cooking. Applicant admitted that its rice is "not rice of the Valencia type." In re Pan American Grain Mfg. Co., Inc., Serial No. 85035510 (February 6, 2013) [not precedential].

A mark is deceptive under Section 2(a) if it contains misdescriptive matter that consumers are likely to believe, and that would likely affect the purchasing decisions of a significant number of consumers.

Examining Attorney Robin M. Mittler submitted evidence from numerous websites showing that "Valencia" is perceived by consumers of rice to refer to a type of rice having particular qualities suitable for certain kinds of cooking. Valencia may, in some cases, refer to Valencia, Spain, but not all "Valencia"-type rice originates there. In any event, "Valencia" is perceived as an indicator of a type of rice. Applicant Pan American admitted that its rice is not of the Valencia type.

The evidence further showed that Valencia rice is especially suitable for certain Spanish dishes: e.g., arroz con pollo and paella. Thus customers are likely to find rice that is marked "Valencia" to be more desirable than other rice products, and the designation would be material to their purchasing decisions.

Pan American urged the Board to look at the mark as a whole, but the Board found nothing in the mark that contradicted the impression that VALENCIA denotes the type of rice. Next, Pan American argued that VALENCIA has other meanings: a surname, a female given name, a region in Venezuela, the Spanish equivalent of the English word "valence." The Board, however, saw no evidence that consumers would interpret VALENCIA in any of these alternative ways. In the context of applicant's goods, VALENCIA will be seen as a designation of the type of rice.

Finally, Pan American pointed to its Puerto Rican trademark registration for VALENCIA, lamely arguing that Puerto Rican trademark law is derived primarily from the Lanham Act. Moreover, under Puerto Rican law, a certificate of registration is prima facie evidence of the mark's validity. The Board was not impressed:

It is well established that the Board gives no probative weight to state or foreign registrations because the Board's determination regarding the registrability of a mark under the Lanham Act is predicated on the facts before us in this application, not on the basis of a decision by the Puerto Rico Department of State on an unknown set of criteria.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

Text Copyright John L. Welch 2013.


Post a Comment

<< Home