It is rare for the U.S. Court of Appeals for the Federal Circuit to reverse a decision of the Trademark Trial & Appeal Board (TTAB) in an ex parte appeal, and it is also rare for the Court to address a case of geographic descriptiveness, but on January 15, 2015, the Court did both when it stuck a fork in the PTO’s refusal to register the mark NEWBRIDGE HOME for cutlery.
The applicant trades as “Newbridge Silverware” and is based in Newbridge, Co. Kildare, Ireland, where most of its products are in fact made. The USPTO had refused to register the proposed mark NEWBRIDGE HOME, finding that the term NEWBRIDGE is a “generally known geographic place” and that consumers would be presumed to make an (accurate) association between the goods and the place, and thus concluded that the mark was “primarily geographically descriptive” of the goods. The TTAB affirmed.
The CAFC opinion does not mention, but it is important to keep in mind, that the burden of proof on descriptiveness refusals is on the Examiner, and doubts must be resolved in favor of the applicant. The Court of Appeals (after giving a lengthy and instructive summary of the development of the law on geographic marks) reviewed the record and held that the refusal was not supported by substantial evidence. In particular the PTO had not proven the first element: whether Newbridge, Ireland, is a “generally known geographic place” to the American purchasing public. The Examiner had relied upon a single gazetteer entry and various websites (including Wikipedia) to establish that Newbridge is the second largest town in County Kildare and the seventeenth largest in Ireland, and home to a “silverware visitor centre”. Not enough, said the Court of Appeals, noting that Newbridge is a town of less than 20,000 people and does not even appear on some of the maps in the record. Nor did the PTO establish that the American public was actually familiar with the facts shown in the gazetteer and website entries. (The court also cuttingly dismissed the PTO’s suggestion that simply because information is published on the internet, it can be presumed to be generally known.) Finally the court noted that the word NEWBRIDGE has other, non-geographic meanings and appears in other registered marks.
The case was reversed and remanded for further proceedings. It remains possible that the Examiner on remand, if given a second bite at the apple, could introduce more evidence to establish that the town of Newbridge is generally known. This author was counsel of record for some of the third party NEWBRIDGE marks cited in the record. I have travelled in Ireland and have relatives and friends there, but I have never heard of the town of Newbridge. So the Examiner may have her work cut out for her.
The case is In re The Newbridge Cutlery Company, Case No. 2013-1535, USPTO Serial No. 79/094,236.