In Re Miracle Tuesday, LLC, No. 2011-1373, 2012 WL 4697447 (Fed. Cir. 2012)

Plaintiff filed an intent-to-use application seeking to register a trademark for glasses, wallets, handbags, purses, travel bags, suitcases, belts, and shoes.

In Re Miracle Tuesday, LLC, 2012 WL 4697447, at *1. “JPK” were the initials of the designer of the relevant goods. Id. Although the designer was a French citizen, at the time the application was filed, he no longer lived in Paris, and instead, lived and designed in the United States. Id. The examining attorney refused to register the mark, and the applicant appealed. The Trademark Trial and Appeal Board (the “Board”) agreed with the examining attorney that the “(1) the primary significance of the mark is Paris; and (2) Paris is famous for fashion . . . .” See id. Moreover, because the “only connection between the goods and Paris is that [the designer] is Parisian,” and there was evidence that “a substantial portion of relevant consumers would be deceived into believing that the goods came from Paris,” the Board found that the mark was primarily geographically deceptively misdescriptive. Id. The applicant appealed to the Federal Circuit. Id. at *2.

The Federal Circuit first noted, “the relevant inquiry . . . is whether there is a connection between the goods and Paris—not between the designer and Paris.” Id. at *4. There was no evidence of a direct connection between the goods and Paris. Id. at *5. The Federal Circuit then rejected the applicant’s argument that there was a heightened standard of materiality for goods and that the Board used the wrong standard. Id. The Court explained that there is a heightened standard with respect to services, but not for goods. Id. For goods, the “evidence that a place is famous as a source of those goods is sufficient to raise an inference of materiality,” but with service marks, there must be a “heightened association between the services and geographic location.” Id. Because the relevant application was for goods, not services, no heightened standard was required, and the designer’s time in Paris did not “overcome a proper inference of materiality.” Id. at *6. The Federal Circuit affirmed the Board’s decision. Id. at *7.