The determination of whether a mark is geographically misdescriptive involves only the "primary significance" of the mark when viewed in connection with the goods applied for, not any potential alternative meanings of the mark, even if those alternative meanings are non-geographic. This holding, along with the rejection of heightened materiality standard, was the result of the Trademark Trial and Appeal Board (TTAB) opinion in In re Jonathan Drew Inc d/b/a Drew Estate (Serial No 77099522, January 28 2011), which found the mark KUBA KUBA to be primarily geographically deceptive misdescriptive when used in connection with cigars.
The TTAB began by stating the Federal Circuit's test for finding a mark to be primarily geographically deceptively misdescriptive under Section 2(e)(3) of the Lanham Act:
- whether the mark's primary significance is a generally known geographic location;
- whether consumers are likely to believe (falsely) that the goods originate from that place; and
- whether the misrepresentation is a material factor in the consumers' decision.
The applicant's primary argument was that, due to the mark's numerous other meanings and its spelling differences from 'Cuba', consumers would not identify the mark with the country Cuba. The TTAB, however, rejected each of those arguments. First, it noted that 'Kuba' is a mere one-letter misspelling of 'Cuba', and that misspellings are considered the equivalent of the official name for the purposes of determining the primary meaning of a mark. Not only were not only similar in both appearance and pronunciation, but there was "nothing fanciful or unusual" about substituting a 'K' for a 'C' in English. Additionally, according to TTAB precedent, the repetition of the word 'Kuba' did not distract from the meaning of the word by itself.
Second, the TTAB rejected the argument that consumers would associate the mark with alternative meanings for 'Kuba', in particular the applicant's argument that it would be associated with the 'Kuba Kingdom' of 16th-century Africa. Using Wikipedia as a source, the TTAB found that the African kingdom was not only obscure, but known primarily for textiles, masks and other regalia – not cigars. Without disputing that it was an alternative meaning, the TTAB said that it was not relevant to the analysis because the mark's primary meaning must be considered "in relation to the goods with which the mark is (or will be) used and from the perspective of the relevant purchasers". The TTAB found that 'Kuba Kingdom', as well as the other alternative meanings suggested by the applicant (including little-known locations around Europe and acronyms from South Korea), would be "obscure to most consumers", while 'Cuba' was well known to consumers of cigars. Therefore, the TTAB found that the primary meaning of the mark KUBA KUBA was a reference to the country Cuba.
Although the applicant's goods did not originate from Cuba, the TTAB found that because Cuba is famous for cigars, consumers would likely believe that the goods came from Cuba. It rejected the applicant's argument that consumers would not believe that the goods came from Cuba due to the embargo on Cuba by the US government, as the applicant had no evidence beyond its legal briefs that the embargo would "have any effect on the perception" of the mark.
Finally, to establish the third and final element of the test, there must be an indication that "a substantial portion of the relevant consumers" will be "materially influenced" by the geographic meaning of the mark. The TTAB found that cigars are an important product of Cuba, and that Cuba is known for high-quality tobacco and cigars. Therefore, the TTAB held that at least a substantial portion of consumers would be influenced by the geographic deception into purchasing the goods. The TTAB rejected the applicant's argument that recent Federal Circuit cases required a higher showing of deceptiveness, and that a mere inference is not enough to establish deceptiveness. According to the TTAB, the case that argument was based on, In re California Innovations Inc (329 F3d 1334 (Fed Cir 2003)), involved a mark without a strong goods/place association. Because in this case there was "a strong or heightened goods/place association", an inference of deception was sufficient to support a finding of materiality.
Therefore, the examiner's refusal to register KUBA KUBA on the grounds that the mark was primarily geographically deceptively misdescriptive was affirmed.
For further information on this topic please contact Howard J Shire or Aaron Johnson at Kenyon & Kenyon LLP by telephone (+1 212 425 7200), fax (+1 212 425 5288) or email ([email protected] or [email protected]).
An earlier version of this update first appeared on WTR Daily, part of World Trademark Review (www.WorldTrademarkReview.com), in March 2011.