Evidential burden of geographical misdescription higher for service marks

In In Re Les Halles De Paris, the Court of Appeals for the Federal Circuit has reversed a Trademark Trial and Appeal Board (TTAB) decision that had refused registration of LE MARAIS for restaurant services. In so doing, it stated that when rejecting an application for registration on the grounds that the mark is geographically deceptively misdescriptive, the evidential burden on the US Patent and Trademark Office (PTO) is higher for service marks than for marks covering goods.

Les Halles De Paris owns a New York restaurant that operates under the name Le Marais and serves kosher French food. In 1999 it applied to register LE MARAIS for restaurant services. Les Halles took the name from the Le Marais district of Paris in France, which is a Jewish quarter famous for its restaurants. The TTAB rejected the application on the grounds that it was geographically deceptively misdescriptive pursuant to Section 1052(e)(3) of the Lanham Act.

Earlier this year in In re California Innovations, the Federal Circuit interpreted Section 1052(e)(3) to require "a focus on whether the public is deceived" (see Geographical misdescription is irrelevant to thermal bag mark registration). Noting that the California Innovations Case dealt with goods, the Federal Circuit expressly expanded the test set out in that decision to cover service marks. It also stated that the criteria under which the PTO could reject a service mark registration were more stringent than for marks covering goods.

Following the ruling in the LE MARAIS Case, to refuse registration of a service mark under Section 1052(e)(3) the PTO must now show that:

  • the primary significance brought to mind by the mark is a well-known geographic location;

  • consumers were likely to believe that the place identified by the mark indicated the origin of the services rendered in connection with the mark, when in fact the services did not come from that place; and

  • the misrepresentation was a material factor in the relevant consumers' purchasing decisions.

The Federal Circuit noted that where the geographic term at issue is associated with goods, the PTO may readily satisfy the second and third prongs of the above test by establishing that (i) the geographic location is known for producing the goods and/or is famous as a source of those goods, and (ii) the goods associated with the mark do not come from that location. When it comes to services, however, this is insufficient because a customer usually receives services, especially in the restaurant business, at the location of the business. For example, to refuse registration in this case, the PTO would have to establish, among other things, that customers in the New York restaurant identified its services with the Le Marais area of Paris.

The court stated that the evidential burden on the PTO is higher for service marks as it may only reject them for being primarily geographically deceptively misdescriptive if it can find sufficient evidence to satisfy the second and third prongs of the above test. Specifically, such evidence must establish that (i) the consumers "will likely be misled to make some meaningful connection between [...] the service and the relevant place", and (ii) there exists a "heightened association" between the service and the relevant geographic location.

Based on the new stricter standard, the court reversed the TTAB's refusal to register the LE MARAIS mark. It stated that the TTAB had failed to provide sufficient evidence to satisfy the now rigorous second and third prongs of the test.

Howard J Shire, Kenyon & Kenyon, New York

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