Thursday, January 15, 2015

CAFC in Newbridge trademark case: not all information on the internet is generally known


The Trademark Examiner refused to register the
mark as being primarily geographically descriptive when
applied to applicant’s goods under 15 U.S.C. § 1052(e)(2)
(2012). Id. The Board affirmed, concluding that Newbridge,
Ireland, is a generally known geographic place
and the relevant American public would make an association
between applicant’s goods and Newbridge, Ireland.
Id. at *6.

The CAFC noted there were few recent relevant cases:

There have been few decisions by this court dealing
with primarily geographically descriptive marks. We last
discussed such marks in detail nearly thirty years ago.
See In re Societe Generale Des Eaux Minerales De Vittel
S.A., 824 F.2d 957 (Fed. Cir. 1987). To give context to our
analysis, we begin with a discussion of the evolution of
the current statutory framework.

The CAFC went into historical discussion:

The next year, Congressman Lanham
proposed an amended bill that would prevent registration
for “a mark which, when applied to the goods of the
applicant, has merely a descriptive or geographical, and
no other, meaning.” H.R. 4744, 76th Cong. (1st Sess.)
§ 2(e) (Mar. 3, 1939) (emphasis added). In discussing this
language, Mr. Rogers reiterated the problem of where to
draw the line on the registrability of geographical names,
and suggested amending the statute to prevent registration
of marks, which, “when applied to the goods of the
applicant, [are] primarily geographical and descriptive of
them.” Hearings on H.R. 4744 before the Subcomm. on
Trade-Marks of the House Comm. on Patents, 76th Cong.,
1st Sess. 19 (Mar. 28, 1939) (emphasis added). The next
day, at the behest of Congressman Lanham, Mr. Rogers
read into the record an amended version of this section,
which, inter alia, would prevent registration of a mark
which, “[w]hen applied to the goods of the applicant is
primarily geographically descriptive of them.” See id. at
39 (Mar. 29, 1939). When Congressman Lanham reintroduced
the bill later that year, he used this language, see
H.R. 6618, 76th Cong. (1st Sess.) § 2(e) (June 1, 1939),
and this language survived in the statute as enacted. In
addition, the statute was subsequently amended to also
refuse registration for primarily geographically deceptively
misdescriptive marks. See Nantucket, 677 F.2d at 108–
11 (Nies, J., concurring) (describing this legislative history).

Thus, in the Lanham Act, section 1052(e) instructed
the PTO to refuse to register a mark if, “when applied to
the goods of the applicant it is primarily geographically
descriptive or deceptively misdescriptive of them.”
§ 1052(e)(2) (1946). Both primarily geographically descriptive
and deceptively misdescriptive marks could be
registered, however, if they acquired distinctiveness.

As to analysis:

the Trademark Examiner must show
(1) “the mark sought to be registered is the name of
a place known generally to the public,” Vittel, 824 F.2d at
959, and
(2) “the public would make a goods/place association,
i.e., believe that the goods for which the mark is
sought to be registered originate in that place.” Id.
Accord In re Miracle Tuesday, LLC, 695 F.3d 1339, 1343
(Fed. Cir. 2012) (describing analogous factors for primarily
geographically deceptively misdescriptive marks)
(citing Cal. Innovations, 329 F.3d at 1341).

To refuse registration of a mark as being primarily
geographically descriptive, the PTO must also show that
(3) “the source of the goods is the geographic region
named in the mark.” Bernier, 894 F.2d at 391. Accord
Trademark Manual of Examining Procedure (“TMEP”)
§ 1210.01(a). In applying prongs (1) and (2) of this test,
our precedent establishes that the relevant public is the
purchasing public in the United States of these types of
goods. As we made clear in Vittel, “we are not concerned
with the public in other countries.” Vittel, 824 F.2d at
960. Accord Institut National Des Appellations D’Origine
v. Vintners Int’l Co., 958 F.2d 1574, 1580–81 (Fed. Cir.

The issue in the case:

Accordingly, the question before us is whether
“Newbridge” is primarily geographically descriptive
when used on or in connection with applicant’s goods.

There was an interesting proposition related to searching on
the internet:

Finally, at oral argument, the solicitor implied
that in this day and age, where the average American
consumer has instant internet access, a location is generally
known if the existence of the location can be reasonably
found on the internet. See Oral Argument at 25:05–
28:20, Newbridge, 2013-1535 (Fed. Cir. July 10, 2014),
available at http://oralarg

But the CAFC noted:

The conclusion that Newbridge, Ireland, a town of less
than twenty thousand people, is a place known generally
to the relevant American public is not supported by
substantial evidence
. That Newbridge is the second
largest town in County Kildare and the seventeenth
largest in the Republic of Ireland reveals nothing about
what the relevant American purchaser might perceive the
word “Newbridge” to mean and is too insignificant to
show that Newbridge is a place known generally to the
American purchasing public. Similarly, while the Board
relied on the Columbia Gazetteer of the World listing,
what is missing is any evidence to show the extent to
which the relevant American consumer would be familiar
with the locations listed in this gazetteer.

As to the "internet argument", the CAFC observed

Likewise, the fact that Newbridge, Ireland, is mentioned
on some internet websites does not show that it is
a generally known location. The internet (and websites
such as Wikipedia) contains enormous amounts of information:
some of it is generally known, and some of it is
not. Cf. In re Bavaria St. Pauli Brauerie AG, 222
U.S.P.Q. 926, 928 (T.T.A.B. 1984) (“there are dozens of
other place names on the same page of the gazetteer that
are likewise devoid of significance as places which any
substantial quantity of American purchasers would
associate with any particular products”). There is simply
no evidence that the relevant American consumer would
have any meaningful knowledge of all of the locations
mentioned in the websites cited by the PTO. CAFC
Further, it is simply untenable that any information
available on the internet should be considered known to
the relevant public. The fact that potential purchasers
have enormous amounts of information instantly available
through the internet does not evidence the extent to
which consumers of certain goods or services in the United
States might use this information to discern the primary
significance of any particular term. Neither is a
place necessarily “generally known” just because a purchaser
is informed that the name of the mark is the name
of the place. In Vittel, we approvingly cited a Board
decision that allowed registration of the mark AYINGER
BIER for beer, even though the mark was present on the
label and “in picture and words, show[ed] the brewery to
be located in Aying.” Vittel, 824 F.2d at 960 (citing In re
Brauerei Aying Franz Inselkammer Kg, 217 U.S.P.Q. 73
(T.T.A.B. 1983)).

And an allusion to NEXIS:

Gazetteer entries and
internet websites are valuable for the information they
provide. But the mere entry in a gazetteer or the fact that
a location is described on the internet does not necessarily
evidence that a place is known generally to the relevant
public. See Vittel, 824 F.2d at 959 (“In dealing with all of
these questions of the public’s response to word symbols,
we are dealing with the supposed reactions of a segment
of the American public, in this case the mill-run of cosmetics
purchasers, not with the unusually well-travelled,
the aficionados of European watering places, or with
computer operators checking out the meaning of strange
words on NEXIS.”).

As to other cases

On the other
hand, the fact that the PTO has registered “newbridge” in
contexts where the goods did not originate from Newbridge
is not particularly probative since the PTO may
have found no goods/place association in those contexts
and, in any event, “decisions regarding other registrations
do not bind either the agency or this court.” In re Boulevard
Entm’t, Inc., 334 F.3d 1336, 1343 (Fed. Cir. 2003)
(citing In re Nett Designs, 236 F.3d 1339, 1342 (Fed. Cir.


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