TTABlog Test: Is AMERICAN STOGIES Primarily Geographically Deceptively Misdescriptive of Cigars Not from the USA?

The USPTO refused to register the proposed mark AMERICAN STOGIES for cigars [STOGIES disclaimed], deeming the mark to be primarily geographically deceptively misdescriptive under Section 2(e)(3). Applicant argued that the word "American" is not misdescriptive of its cigars because it is a legal entity in the Dominican Republic and its cigars are handmade in Nicaragua with premium Honduran and Nicaraguan long-filler tobaccos. How do you think this came out? In re Tabacalera Palma, Ltd., Serial No. 88866282 (August 15, 2022) [not precedential] (Opinion by Judge George C. Pologeorgis).

There are three elements that must be met to invoke the bar of Section 2(e)(3): (1) The primary significance of the mark is a generally known geographic location; (2) The goods do not come from the place identified in the mark, but the relevant public would be likely to believe that the goods originate there; and (3) The misrepresentation is a material factor in the purchaser's decision to buy the goods in question. In re Spirits Int’l N.V., 563 F.3d 1347, 90 U.S.P.Q.2d 1489, 1490-95 (Fed. Cir. 2009); In re California Innovations, 329 F.3d 1334, 66 U.S.P.Q.2d 1853, 1858 (Fed. Cir. 2003).

The Board noted that there was no evidence that relevant U.S. consumers would view the term "American," when used as part of a trademark, as indicating that the goods originate in countries other than the United States. Because the first and primary dictionary definition of "American" refers to the United States, the Board found that relevant consumers would reasonably believe that applicant's goods originate in the United States.

In light of the (limited) evidence that cigars are manufactured in the United States, the Board found that the relevant public is likely to believe that the goods originate in the United States.

As to materiality, however, the only evidence submitted by the USPTO comprised screenshots of a single website of a third-party cigar manufacturer in Ybor City, Florida. The Board found this evidence insufficient to meet the third prong of the Section 2(e)(3) test:

First, there is nothing in the record to indicate how often U.S. consumers have viewed this website. Second, the screenshots are merely an advertisement of a third party cigar manufacturer touting the attributes of its product. While the third party cigar manufacturer does state on its website that its cigar brand “honors America’s cigar tradition by rolling world class cigars in America using the finest American grown, aged, heirloom tobaccos," we find this language mere trade puffery and nonetheless does not demonstrate that (1) the United States is famous for producing a particular style of cigar or (2) that cigars manufactured in the United States are a principal product of the U.S or are of premium quality In sum the Examining Attorney has not submitted sufficient evidence on the critical element of materiality to support the refusal to register.

And so, the Board reversed the refusal. It noted, however, that its decision is not an "endorsement or approval" of the mark. "It is possible that we would reach a different result on a more complete record such as may be adduced in an inter partes proceeding."

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TTABlogger comment: Sorry, PTO. No cigar. Seems like the Board was less than thrilled by the Office's effort in examining this application.

Text Copyright John L. Welch 2022.