Friday, July 25, 2014

Test Your TTAB Judge-Ability: Is VENEZIA-MILANO Geographically Deceptively Misdescriptive of Clothing?

The PTO refused to register the mark VENEZIA-MILANO for clothing on the ground that the mark is primarily geographically deceptively misdescriptive under Section 2(e)(3). Applicant's goods are made in China and are so labelled. How do you think this came out? In re Tigerland-Foxland Ltd., Serial No. 85130889 (July 23, 2014) [not precedential].

According to applicant's translation statement, VENEZIA-MILANO means "Venice-Milan." Applicant feebly contended that the primary significance of its mark is not a generally known geographic location because there is no actual place called "Venice-Milan" and purchasers will not dissect the mark. The Board agreed that it should consider the mark as a whole, but it found that MILANO is the dominant feature of the mark because of its stronger connection with the involved goods and the fashion industry. Adding the word VENEZIA merely reinforces the perception that the goods emanate from a city in Italy.

Although there is no actual place known as "Venice-Milan," that fact does not detract from the primary significance of the mark: the mark names a geographic location that is "not obscure, minor, remote, or not likely to be connected with the goods." Taken together, Milan and Venice suggest that the goods originate in Italy, specifically Milan and/or Venice.

Applicant conceded that its goods are not made in Milan or Venice. Of course, there is a goods/place association between the mark and the goods because, as readily established by Examining Attorney Susan C. Hayash, Milan is known as a center for fashion and Venice is one of Italy's major ports and a famous tourist attraction. So consumers will mistakenly believe that the goods come from either Milan or Venice.

Finally, this mistaken belief is a material factor in the purchasing decision because Milan is famous for women's clothing and a substantial portion of consumers who care about fashion will be motivated to purchase applicant's goods in the belief that they come from Milan. The addition of Venice to the mark does not detract from its overall impression: "the reference to Milan is unmistakable."

Applicant maintained that consumers would not be deceived because "its mark, as used on the goods, includes a label that reads 'China.'" The Board pointed out, however that the additional matter on the label is not part of the applied-for mark. In short, the mark stands on its own. It also observed that the specimen label submitted by applicant included the phrase "designation Italy."

Finally, the Board noted applicant's claim of acquired distinctiveness as of July 2006. However, because the applied-for mark is ineligible for registration under Section 2(e)(3), Section 2(f) is not available to applicant. Section 2(f) states that a mark found to be primarily geographically deceptively misdescriptive may be registered only if it "became distinctive of the applicant's goods in commerce before the date of the enactment of the North American Free Trade Agreement Implementation Act" (i.e., prior to December 8, 1993).

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog note:  So how did you do?

Text Copyright John L. Welch 2014.


At 7:31 AM, Anonymous Carole Barrett said...

Appeal was pro se...applicant should have had counsel who likely would have counseled that this was a loser.

At 12:40 PM, Anonymous Erik Pelton said...

Perhaps the most notable thing about this case is that the Board opinion was issued just 34 days after the oral hearing!

At 12:41 PM, Anonymous Anonymous said...

What if the designer was Italian and lived in one or both of those cities and the products were made in China? Isn't Italy more known for its design of clothing and not necessarily for the production of clothing? Was this an argument that could have been made?

At 12:48 PM, Blogger John L. Welch said...

See this CAFC decision

The CAFC pointed out, however, that the inquiry under the statute is not whether there is a connection between the designer and Paris, but between the goods and Paris. The fact that Mr. Klifa lived in Paris more than 25 years ago is insufficient to establish that goods now marketed under the applied-for mark originated there. The involved goods are made in Asia and designed in Miami. The evidence failed to show a "direct connection" between the goods and Paris, and therefore the Board was correct in its finding regarding origination.

At 1:27 PM, Anonymous Freiburger said...

Erik, that's nothing, the Board issued its decision in the GREEN SUPREME appeal (85502207) the day after the oral hearing.

At 6:51 PM, Anonymous Marella Naj-Oleari said...

Interesting case. Reminds me that the Italian High Court (23 January 1993 no 784) declared the deceptive nature of the brand 'new england' for clothing and accessories manufactured in Italy.
In our country is still considered a leading case...

At 6:52 PM, Anonymous Marella Naj-Oleari said...

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