‘JPK Paris 75' Mark With No Connection To Paris Is Geographically Misdescriptive

Bloomberg BNA’s Patent Trademark & Copyright Law Daily™is the IP industry’s premier news service, offering objective, timely,and reliable daily news coverage and commentary from leading IP law...

An applied for “JPK Paris” trademark for goods whose only connection with Paris was that the designer of the goods once lived there is primarily geographically deceptively misdescriptive, and thus not eligible for registration under Section 2(e)(3) of the Lanham Act, the U.S. Court of Appeals for the Federal Circuit held Oct. 4 (In re Miracle Tuesday LLC, Fed. Cir., No. 2011-1373, 10/4/12).

The court said that in order to overcome a refusal to register under Section 2(e)(3), 15 U.S.C. §1052(e)(3), an applicant must show a strong connection between its goods and the geographic origin included in the mark.

In this case, the court said that the Trademark Trial and Appeal Board correctly held that goods manufactured in Asia for a Miami-based corporation do not “originate” in Paris merely because the designer previously lived in Paris and considers himself to be a Parisian. The court therefore affirmed the board's refusal to register the mark.

Company Makes Handbags, Other Goods.

Miracle Tuesday LLC is a United States-based company that in 2009 filed an intent-to-use application with the Patent and Trademark Office seeking registration of the mark “JPK Paris 75.” The mark, which disclaimed the exclusive right to use the word “Paris,” was to be used with sunglasses, handbags, wallets, purses, travel bags, and shoes.

The trademark examining attorney rejected the application on the grounds that the mark was primarily geographically deceptively misdescriptive.

Miracle Tuesday had argued that its designer, Jean-Pierre Klifa, was a French citizen and it pointed out that he had lived in Paris for 22 years. The examining attorney determined that this connection alone was not sufficient to support registration. Moreover, since Paris is well known for fashion accessories, such as the goods that would be sold under the mark, the examining attorney determined that consumers would be materially mislead about the origin of goods sold under the mark.

Miracle Tuesday appealed the examining attorney's refusal to the TTAB. The board affirmed the refusal. The board based its ruling on the following undisputed facts: (1) France is well known for its design and fashion industries; (2) Miracle is a Nevada corporation with a principal place of business in Miami; (3) Klifa once lived in Paris but has lived in the United States for many years; and (4) Klifa designs the handbags.

Miracle Tuesday urged the board to overturn the refusal based on the fact that the letters “JPK,” which are Klifa's initials, are the dominant portion of the mark. But even so, the board said that the inclusion in the mark of the word “Paris” will lead consumers to believe that the products were either designed or manufactured in that city. The board also determined that Klifa's former residence in Paris was insufficient to support a connection with the city. It thus affirmed the refusal under Section 2(e)(3).

Miracle Tuesday appealed.

Consumers Will Believe Goods Came From Paris.

Section 2(e)(3) of the Lanham Act provides that a mark can be refused registration if the mark “when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them.” 15 U.S.C. § 1052(e)(3).

The court in In re California Innovations Inc., 329 F.3d 1334, 66 USPQ 1853 (Fed. Cir. 2003), established a three-part test that to determine whether a mark is primarily geographically deceptively misdescriptive. Under that test a court must consider whether:

(1) the primary significance of the mark is a generally known geographic location;  

(2) the consuming public is likely to believe the place identified by the mark indicates the origin of the goods bearing the mark (i.e., that a goods place association exists), when in fact the goods do not come from that place; and  

(3) the misrepresentation would be a material factor in the consumer's decision to purchase the goods.  

 

Miracle Tuesday did not disagree that the primary significance of the mark was Paris, and thus the court focused on only the second and third prongs of the test.

Quoting In re Save Venice New York Inc., 259 F.3d 1346, 59 USPQ2d 1778 (Fed. Cir. 2001)(148 PTD, 8/2/01), Judge Kathleen M. O'Malley noted that while the PTO has the initial burden of establishing a goods/place association, “the burden then shifts to the applicant to rebut this showing with evidence 'that the public would not actually believe the goods derive from the geographic location identified by the mark.' ”

Miracle Tuesday failed to introduce any evidence refuting the board's conclusion that Paris is famous for fashion and design. “Because relevant purchasers are likely to think of Paris as a known source for fashion accessories, we agree with the Board that there is sufficient evidence of a goods/place association between Paris and the goods listed,” the court said.

Designer's Paris Connection Insufficient.

The court next turned its attention to the second prong of the inquiry: whether the goods in fact have an association with Paris.

“It is undisputed that goods may be deemed to originate in a geographic location if they are manufactured there,” the court said. It added, “Origin can be predicated on factors other than manufacture, however, where the circumstances justify such a connection.”

At oral arguments, the PTO admitted that the place of design can, in some instances, determine origin. Moreover, the court noted that in Corporacion Habanos S.A. v. Anncas Inc., 88 USPQ2d 1785 (T.T.A.B. 2008), the TTAB determined that origin can be determined from the place of manufacture of a main component or primary ingredient of a good.

Miracle Tuesday argued that the TTAB ignored these cases and instead narrowly construed the word “originates” in a way that excluded Klifa's connection with Paris. For support, Miracle Tuesday pointed out that celebrities are asked during red carpet interviews “who” they are wearing, and not “where” the garment was made. The court was not persuaded.

“Regardless of whether today's consumers consider and care about the origin of the designer of the goods they purchase, the relevant inquiry under the statute is whether there is a connection between the goods and Paris--not between the designer and Paris,” the court said. It then agreed with the TTAB that “the fact that Mr. Klifa lived in Paris over twenty-five years ago is insufficient to establish that the goods to now be marketed under the proposed mark originate there.”

Given that there is no other connection between the goods and Paris, the court found that Miracle Tuesday had failed to overcome the burden of establishing that the goods that would be sold under the mark originated in Paris.

Materiality for 'Goods' Different Than for 'Services.'

The materiality prong of the inquiry, first articulated in California Innovations, was fleshed out in In re Spirits International N.V., 563 F.3d 1347, 90 USPQ2d 1489 (Fed. Cir. 2009) (83 PTD, 5/4/09). In Spirits held that in order for a geographical term to be unregistrable under Section 2(e)(3), it must be shown that the misrepresentation of the geographic origin of the goods was a material factor in a “substantial portion” of the relevant consumers' decision to purchase the goods in question.

The court has also held, however, that materiality can be inferred if evidence is presented demonstrating that the geographic location on the mark is well known for the goods in question. In re Les Halles de Paris J.V., 334 F.3d 1371, 671 USPQ2d 1539 (Fed. Cir. 2003).

The TTAB inferred materiality after determining that Paris was well known for fashion and design accessories. On appeal, Miracle Tuesday argued that this inference was in error.

Miracle Tuesday argued that Les Halles de Paris stood for the proposition that the PTO “must show some heightened standard to show a false association between the services and the relevant geographic location.”

The court disagreed with Miracle Tuesday's premise and also found Les Halles de Paris easily distinguishable on the facts.

In Les Halles de Paris, the court held that the trademark “Le Marais” for a New York French kosher restaurant was not primarily geographically deceptively misdescriptive. The court there explained that customers received services at the location of the business and, having chosen to go there for services, were well aware of the business's geographic location.

“Miracle Tuesday's argument is fundamentally flawed … given that this case involves a mark to identify goods whereas Les Halles de Parisinvolved an application to register a mark for restaurant services,” the court said. It noted that in Les Halles de Paris it suggested that the materiality standard may be easier for the PTO to satisfy for goods than for services since geographic marks for services were less likely to deceive consumers. Looking back on that decision, the court said:

[W]e drew a distinction between the evidence necessary to give rise to an inference of materiality for goods and that necessary to give rise to that same inference for services. Although for goods, evidence that a place is famous as a source of those goods is sufficient to raise an inference of materiality, when dealing with service marks, we held that there must be a heightened association between the services and geographic location.  

 

The mark in this case would apply to goods, and thus Miracle Tuesday's reliance on the “heightened association” language from Les Halles de Paris is “misplaced” the court said.

The court said that the TTAB's inference of materiality was appropriate given its findings, and it concluded that Miracle Tuesday had done nothing to refute those inferences.

“Because our analysis must focus on the information provided in the application, Mr. Klifa's early years in Paris are effectively irrelevant, and certainly insufficient to overcome a proper inference of materiality,” the court said.

The court accordingly affirmed the Section 2(e)(3) refusal to register the mark.

The opinion was joined by Chief Judge Randall R. Rader and Judge Richard Linn.

Miracle Tuesday was represented by Paul D. Supnik of Beverly Hills, Calif. The PTO was represented by Associate Solicitor Christina J. Hieber, Alexandria, Va.

By Tamlin H. Bason  


Opinion at http://pub.bna.com/ptcj/11_1373Oct0412.pdf