Digest of In re the Newbridge Cutlery Co., No. 2013-1535 (Fed. Cir. January 15, 2015) (precedential). On appeal from USPTO TTAB. Before Prost, Linn, and Hughes.
Procedural Posture: Applicant The Newbridge Cutlery Company (“Newbridge Cutlery”) appeals from the decision of the Trademark Trial and Appeal Board (“Board”) affirming the Trademark Examiner’s refusal to register Applicant Newbridge Cutlery’s NEWBRIDGE HOME mark for, among other goods, silverware as being primarily geographically descriptive. The CAFC reversed the Board’s decision and remanded for further consideration.
- Primarily Geographically Descriptive Trademarks: Interpreting the governing Lanham Act, the CAFC stated that refusal to register a mark as primarily geographically descriptive under § 1052(e)(2) or as primarily geographically deceptively misdescriptive under § 1052(e)(3) extends only to those marks for which the geographical meaning is perceived by the relevant public as the primary meaning and that the geographical significance of the mark is to be assessed as it is used on or in connection with the goods.
To refuse a registration as primarily geographically descriptive or as primarily geographically deceptively misdescriptive, the PTO must show that (1) the mark sought to be registered is the name of a place known generally to the public (supporting factors are, e.g., a sizeable population of the location, or that members of the consuming public have ties to the location), 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 (the PTO needs to make a prima facie case of likely association). For both prongs (1) and (2), the relevant public is the purchasing public in the U.S. of these types of goods. To refuse a registration as primarily geographically descriptive, the PTO must also show that (3) the source of the goods is the geographic region named in the mark.
The evidence in the case at hand, the CAFC held, suggests that the town of Newbridge, Ireland, is not generally known, that to the relevant public the mark NEWBRIDGE is therefore not primarily geographically descriptive of the goods, and that prong one of the above test was therefore not met.