Geographic location mark not always primarily geographically descriptive

United States of America

In In Re The Newbridge Cutlery Company (Case No 13-1535, January 15 2015) (Linn J), the US Court of Appeals for the Federal Circuit has reversed a Trademark Trial and Appeal Board (TTAB) decision, concluding that the trademark NEWBRIDGE HOME was not primarily geographically descriptive of the goods because the location of the source of goods, namely Newbridge, Ireland, was not a place generally known to the American public. 

Newbridge Cutlery makes various types of housewares, kitchen wares and silverware under the name Newbridge Home. It sells its products worldwide but its headquarters are in Newbridge, Ireland. In October 2010 Newbridge filed a trademark application for its NEWBRIDGE HOME mark for various goods, including housewares, kitchen wares and silverware. The US Patent  and Trademark Office (USPTO) rejected the application as primarily geographically descriptive because of the name NEWBRIDGE in the application.

In order for an examiner to refuse registration under Section 1052 (e)(2), the examiner must show that the mark sought to be registered is the name of a place known generally to the public, and the public would make a goods/place association - ie, believe that the goods for which the mark is sought to be registered originate in that place, and the source of the goods is the geographic region named in the mark. The TTAB affirmed the examiner’s decision concluding that Newbridge, Ireland is a place generally known to the public. In doing so, it relied on the size of the town (the second-largest in County Kildare), its mention on internet websites and its inclusion in the Columbia Gazetteer of the World.

Newbridge appealed the decision, arguing that 'Newbridge' is not primarily geographically descriptive. The Federal Circuit agreed, concluding that Newbridge, Ireland is not a place generally known to the relevant American public and that the decision by the TTAB was not supported by substantial evidence. The size of the town, its mention on internet websites and its inclusion in the Columbia Gazetteer of the World did not provide evidence that the American purchasers are aware of this information or know about the town Newbridge in Ireland. 

The court did also not agree with the TTAB’s position that information available on the Internet should be considered known to the relevant public. The court concluded that 'Newbridge' has other geographical and non-geographical meanings and that many maps and atlases do not even include the town of Newbridge, Ireland.  The court therefore reversed the TTAB’s decision and held that NEWBRIDGE HOME is not primarily geographically descriptive.

The case shows that mere use of a geographic location name in a mark should not automatically warrant rejection by the USPTO.

Ulrika E Mattsson, McDermott Will & Emery LLP, Chicago

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