The U.S. Court of Appeals for the Federal Circuit upheld the ruling of the Trademark Trial and Appeal Board (TTAB) refusing to register the mark “JPK PARIS 75” as being primarily geographically deceptively misdescriptive under the Lanham Act, of goods neither designed or made in Paris. In re Miracle Tuesday, LLC, Case No. 11-1373 (Fed. Cir., Oct. 4, 2012) (O’Malley, J.).
Designer Jean-Pierre Klifa, a French citizen formerly of Paris but currently resident in Miami, filed an intent-to-use application with the PTO seeking to register the mark “JPK PARIS 75.” Klifa intended to use the mark on accessories, luggage and shoes. The PTO issued a final decision refusing to register the mark as “primarily geographically deceptively misdescriptive.” The TTAB affirmed the refusal to register, rejecting Klifa’s argument that JPK was the dominant portion of the mark and finding that consumers would assume products containing “Paris” in the mark had a connection with Paris in manufacture or design.
A mark is primarily geographically deceptively misdescriptive if the primary significance of the mark is a generally known location, consumers are likely to believe the place identified by the mark indicates the origin of the goods bearing the mark and the geographic misrepresentation was a material factor in the buyer’s decision to purchase the good. The Federal Circuit, reviewing the TTAB decision under the substantial evidence standard, explained that whether a mark is primarily geographically deceptively misdescriptive is a question of fact.
Klifa did not challenge the Board’s finding concerning the first element of the analysis, but focused only on the second and third elements of the statute.
Addressing the second element (whether a buyer is likely to believe Paris was the source of the goods at issue) the Federal Circuit considered whether the mark conveyed an association between the goods and Paris and whether the goods actually came from Paris. The Court easily found a goods/place association as it was undisputed that Paris is famous for fashion and buyers were likely to think of Paris as source for fashion products. The Court acknowledged that determining origin of the goods is not dependent on location of manufacture and in appropriate circumstances the place of design can serve as the origin. Here, the Court upheld the TTAB finding that though Klifa considered himself a Parisian, there was no connection between Paris and goods designed in Miami and manufactured in Asia. The Federal Circuit rejected Klifa’s argument that consumers are more interested in the designer’s origin than the origin of the goods, finding the relevant statutory inquiry to be whether there was a connection between the goods and Paris, not the designer and Paris.
With respect to the third element of the inquiry, whether a substantial portion of buyers would be “materially influenced” by the geographic designation in the mark, the Court distinguished the Les Halles de Paris case which involved a service mark, finding that in the case of goods “evidence that a place is famous as a source of those goods is sufficient to raise an inference of materiality.” The Court affirmed the TTAB finding that the fact that Paris is famous for fashion accessories gives rise to an inference that a substantial number of buyers would be decided into thinking the fashion accessories at issue came from Paris.