Acquired distinctiveness claim does not cut the mustard

In In re Beaverton Foods Inc, the US Patent and Trademark Office's Trademark Trial and Appeal Board (TTAB) has affirmed a refusal to register the mark NAPA VALLEY MUSTARD CO for use with mustard. The TTAB held that the mark was geographically descriptive, even though the applicant, Beaverton Foods Inc, claimed that the mark had acquired distinctiveness prior to the date of enactment of the North American Free Trade Agreement (NAFTA).

Beaverton's mark was initially refused as either geographically descriptive under Section 2(e)(2) of the Lanham Act or geographically deceptively misdescriptive under Section 2(e)(3), depending on whether the goods originated in Napa. Beaverton submitted that the goods originated outside of Napa, such that the mark could not be geographically descriptive. In order to overcome the misdescriptiveness refusal, Beaverton claimed, pursuant to Section 2(f), that the mark had acquired distinctiveness prior to December 8 1993, the date of the enactment of NAFTA.

At the time of the NAFTA enactment, Section 2(f) was amended to include a ´grandfather clause´ so that deceptively misdescriptive marks would be registrable if they had acquired distinctiveness prior to the enactment of NAFTA. This clause was aimed at permitting geographically misdescriptive marks that would have been registrable prior to NAFTA to remain registrable after NAFTA. When Beaverton attempted to take advantage of this clause, however, the examining attorney issued a second office action refusing registration on the different ground that the mark is geographically deceptive under Section 2(a). Marks that are geographically descriptive under Section 2(a) are not merely misdescriptive. Rather, such marks are so deceptive as to preclude registration entirely because the misrepresentation as to the geographical origin is a material factor in the consumer's purchasing decision. Beaverton argued that its acquired distinctiveness claim overcame the deceptiveness refusal and appealed when the examining attorney continued the refusal.

Complicating the analysis somewhat was Beaverton's reliance on the Court of Appeals for the Federal Circuit's decision in In re California Innovations (Fed Cir 2003). In that case, the Federal Circuit held that the test of geographical misdescriptiveness under Section 2(e)(3) should also include a requirement that the mark's geographical misprepresentation was material to the purchasing decision. This more difficult standard was added so that marks that were previously registrable pre-NAFTA upon a showing of acquired distinctiveness would still be registrable post-NAFTA, even if they had not acquired distinctiveness prior to December 8 1993. Thus, the tests under Section 2(a) and 2(e)(3) became the same. Beaverton argued that a refusal under Section 2(a) should thus likewise be subject to the grandfather clause in Section 2(f).

The TTAB disagreed and held in a citable decision that Section 2(a) is the proper refusal in a case where the claim is that the mark acquired distinctiveness pre-NAFTA and that Section 2(a) is specifically not included in the grandfather clause. Essentially, the TTAB relied on precedent and pre-NAFTA practice to preserve the rule that deceptive marks are unregistrable regardless of whether they have acquired distinctiveness. The fact that the geographical misdescriptiveness test had been made more difficult so as to permit previously registrable marks to remain registrable did not mean that deceptive marks that were previously unregistrable would now become registrable.

Accordingly, the lynchpin for whether the mark should be refused under Section 2(a) for geographical deceptiveness or Section 2(e)(3) for geographical misdescriptiveness depends on whether the applicant is claiming that the mark acquired distinctiveness pre-NAFTA. If so then the inquiry will be the same as it was pre-NAFTA and the mark will be refused registration under Section 2(a) for deceptiveness, just as it would have been then.

The TTAB held that refusal to register under Section 2(a) was proper regardless of Beaverton's acquired distinctiveness claim on the grounds that:

• Beaverton admitted that its goods did not come from Napa;
  
  
• there was significant evidence showing a goods/place association between Napa and mustard; and
  
  
• this association was material to the purchasing decision.

Karin Segall, Darby & Darby, New York