Geographic Marks: The Way They Were (Again)
 
August 7, 2003
 
Stephen J. Jeffries- Washington

It is popular knowledge that ENGLISH LEATHER colognes are not made in England, that IRISH SPRING soaps are not made in Ireland, and that Pepperidge Farm MILANO cookies– delicious as they may be – are not actually made in Italy.  The law, however, has only fitfully recognized that companies most often use the cache of geographic place names to conjure up favorable marketing imagery rather than to dupe consumers into believing that products come from the place referenced in a trademark.  Recent developments bode well in this regard.

On May 22, 2003, the Court of Appeals for the Federal Circuit reversed a decision of the Patent and Trademark Office holding the proposed trademark CALIFORNIA INNOVATIONS incapable of registration for insulated food and beverage bags and wraps manufactured in Canada.  This decision should have the effect of permitting businesses to secure exclusive rights in evocative – but not deceptive - geographic names for their products to an extent not available through federal trademark registration since the United States joined NAFTA in 1993.

Prior to 1993, the Patent and Trademark Office could refuse to register marks incorporating geographic place names identifying locales other than the seat of actual product origin on two distinct statutory grounds. First, under Trademark Act §2(a), the Patent and Trademark Office could refuse registration on grounds that the mark was “deceptive” as applied to the product at issue.  The proper assertion of this refusal required that the Patent and Trademark Office establish that the geographic origin of the product was “material” to the customer decision to purchase.  “Deceptive” marks could not – and cannot – be registered under any circumstances.

In addition, under Trademark Act §2(e)(2), the Patent and Trademark Office could refuse registration on the grounds that the mark was “geographically deceptively misdescriptive.”  The proper assertion of this refusal required only that the Patent and Trademark Office establish some minimal public association between the place name and the product (e.g., that competing products were incidentally manufactured in the area named) – not that the geographic origin of the product was “material” to the customer decision to purchase.  However, “geographically deceptively misdescriptive” marks – unlike those deemed deceptive - were capable of registration upon the submission of evidence to the effect that the purchasing public could equate the mark with the product of the particular manufacturer as the result of exposure to product advertising (evidence of “acquired distinctiveness”).

As a practical matter, marks that identified geographic locations famous or well known for the manufacture of a particular type of product were routinely denied registration as “deceptive” under Trademark Act §2(a).  Other geographic marks either less well known or not associated with the particular product at issue were found to be “geographically deceptively misdescriptive,” but registered upon the submission of evidence of acquired distinctiveness.

Subsequent to the implementation of NAFTA in 1993, the language of Trademark Act §2(e)(2) relevant to the registration of “geographically deceptively misdescriptive” marks was removed to Trademark Act §2(e)(3) and – more significantly – the Trademark Act was modified to provide that “geographically deceptively misdescriptive” marks are no longer eligible for registration. Both the practical effect of distinguishing between “deceptive” and “geographically deceptively misdescriptive” marks for purposes of determining eligibility for registration and a popular route to secure registration for “less” misdescriptive geographic marks were eliminated as the result. 

It has remained the position of the Patent and Trademark Office until recently, however, that it need establish only the most minimal public association between the place name and product in order to refuse registration under Trademark Act §2(e)(3). 

California Innovations filed an application to register the mark CALIFORNIA INNOVATIONS for insulated food and beverage bags and wraps in 1995.  The Patent and Trademark Office examiner to whom the application was assigned refused registration on grounds that the mark was “geographically deceptively misdescriptive” under Trademark Act §2(e)(3) – this upon consideration of (1) the fact that California Innovations’ products were made in Canada and (2) rather tenuous evidence to the effect that some food and beverage bags and wraps are manufactured in the State of California (supplying the minimal “goods/place association” required for the “geographically deceptively misdescriptive” refusal under the pre-NAFTA standard). 

The Trademark Trial and Appeal Board of the Patent and Trademark Office affirmed the decision of the examiner in the fall of 1999, and California Innovations subsequently appealed to the U.S. Court of Appeals for the Federal Circuit.  The Federal Circuit reversed, determining that – because there is no longer any difference in practical effect between a refusal on grounds that a mark is deceptive under Trademark Act §2(a) and a refusal on grounds that a mark is “geographically deceptively misdescriptive” under Trademark Act §2(e)(3) - the Patent and Trademark Office may refuse registration under Trademark Act §2(e)(3) only if it can establish:  (1) that “the primary significance of the mark is a generally known geographic location, (2) the consuming public is likely to believe that the place identified by the mark indicates the origin of the goods bearing the mark, when in fact the goods do not come from this place and (3) this misrepresentation would be material to the customer’s decision to purchase.”  As the result, “less” misdescriptive geographic marks – those ultimately neither deceptive nor fraudulent – are again eligible for registration.  Neither does it appear that these marks will require the submission evidence of acquired distinctiveness prior to registration as was the case prior to NAFTA.

For more information, e-mail Stephen J. Jeffries at stephen.jeffries@hklaw.com or call toll free 1-888-688-8500.