TTABlog Test: Is PARMA COFFEE Primarily Geographically Descriptive of Coffee and Other Food Items?
The USPTO refused to register the proposed mark PARMA COFFEE for "chocolate; chocolate-based beverages; cocoa; cocoa-based beverages; coffee extracts; coffee and coffee substitutes; honey; honey substitutes; natural sweetener; sugar; tea; tea extracts; tea-based beverages; preparations for making coffee-based beverages” [COFFEE disclaimed], deeming it primarily geographically descriptive under Section 2(e)(2). Applicant conceded that Parma is an Italian city "well known for its architecture, music, art, ham and cheese," but not for the products identified in the application. How do you think this came out? In re A. ZETA S.R.L., Serial No. 88300086 (September 21, 2021) [not precedential] (Opinion by Judge Thomas W. Wellington).
The test for geographical descriptiveness under Section 2(e)(2) has three required elements:
- The mark is the name of a place known generally to the public;
- The goods for which registration is sought originate in that geographic place; and
- Purchasers would be likely to believe that the goods originate in that geographic place.
The inclusion of the generic term COFFEE in applicant's mark does not alter the Section 2(e)(2) analysis.
Under the first element of the test, the relevant inquiry is whether Parma is a generally known geographic location, not whether Parma is "known for" the identified goods. The evidence submitted by Examining Attorney Erin Falk established that "the primary meaning of Parma is to signify the city in northern Italy," a generally known geographic location.
As to the second element, the Board noted that applicant is an Italian corporation with an Italian address. Applicant did not contend that its goods do not come from Parma. Applicant admitted that its goods are being "developed" in Parma, and so the Board concluded that the goods originate in Parma.
As to the third element, since the geographic location named by the mark is not obscure, a goods/place association may be presumed from the fact that the goods originate in Parma. "Accordingly, because Applicant’s goods are admittedly 'developed' in Parma, Italy, we presume that there is a goods/place association amongst the consuming public."
Applicant pointed to six third-party registrations for the mark PARMA for various goods and services, as well as its own EU registration for the proposed mark. The Board once again pointed out that each application must be examined on its own record, regardless of any earlier mistake the Office may have made in registering another mark. The EU registration, the Board observed, is irrelevant.
And so, the Board affirmed the refusal to register.
Read comments and post your comment here.
TTABlogger comment: Is this a WYHA?
Text Copyright John L. Welch 2021.
posted by John L. Welch @ 9/23/2021
3 comments
3 Comments:
Is survey evidence an option for traversing these primarily geographically descriptive rejections? In this particular case I seriously doubt that "Parma" is a place known generally to the public (presumably meaning the US public). No offense to the American public, but I would be shocked if even 10% of Americans could correctly identify which country Parma is in, or had even heard of it before.
Let alone that those consumers would believe the goods to originate in Parma. Kind of difficult to make that connection if the vast majority of them likely don't even know Parma is a place.
And apparently there are even other examining attorneys who did not realize Parma is a location since there are third party "Parma" registrations for other goods and services.
"As to the second element, the Board noted that applicant is an Italian corporation with an Italian address. Applicant did not contend that its goods do not come from Parma. Applicant admitted that its goods are being "developed" in Parma, and so the Board concluded that the goods originate in Parma." On the other hand, if this application was for fashion goods, a refusal to register under 2(e)(3) (primarily geographically deceptively misdescriptive) might be sustained if the designer was from Parma. A designer who created fashion goods and grew up in Paris was not sufficiently Parisian to avoid a primarily geographically deceptively misdescriptive refusal for fashion goods which included the word PARIS in the mark. See In re Miracle Tuesday, LLC, 695 F.3d 1339, 104 USPQ 2d 1330 (Fed. Cir. 2012).
I too find it difficult to believe that Parma is a place generally known to American coffee drinkers.
Post a Comment
<< Home