In IN RE THE NEWBRIDGE CUTLERY CO., Appeal No. 2013-1535, the Federal Circuit held the mere use of a geographic location name in a mark does not automatically warrant rejection where the location of the source of the goods is not generally known to the American public.
Newbridge Cutlery Co., based in Newbridge, Ireland, sought trademark protection for “Newbridge” in the United States. The Examiner refused to register the mark for being primarily geographically descriptive, and the Board affirmed.
Whether a mark is primarily geographically descriptive is a question of fact, and a rejection on this basis requires a showing that: (1) the mark sought to be registered is the name of a place known generally to the public; (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; and (3) the source of the goods is the geographic region named in the mark. For prongs 1 and 2, the relevant “public” is the purchasing public in the United States.
The Federal Circuit addressed only the first prong, determining Newbridge, Ireland is not generally known to the U.S. public. In reaching this decision, the Federal Circuit dismissed the notion that mere presence on the Internet necessarily evidences that a place is generally known. The Federal Circuit also noted the size of Newbridge, 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.” Because of the lack of substantial evidence considered by the PTO that Newbridge is generally known, the Federal Circuit reversed and remanded.