Geographical misdescription is irrelevant to thermal bag mark registration

In In re California Innovations, the Federal Circuit Court of Appeals has reversed the Trademark Trial and Appeal Board's decision to reject the application to register 'California Innovations' as a trademark for insulated bags. The court found that the fact that the mark is geographically misdescriptive is not relevant as the geographical origin of the product would not be material to the public's decision to buy the product.

In its decision, the court confirmed that a stricter test must be used in determining whether a mark is geographically misdescriptive within the meaning of Section 1052(e)(3) of the Lanham Act. In so doing, the court corrected an inequity that has existed under the US Patent and Trademark Office's (PTO) interpretation of US trademark law since the ratification of the North American Free Trade Agreement (NAFTA).

Prior to NAFTA, geographically misdescriptive marks and geographically descriptive marks were treated in the same manner. Both types of mark could be registered upon a showing of secondary meaning. However, under Section 1052(a) of the Lanham Act, there is an absolute bar on the registration of deceptive marks. To establish that a mark is deceptive, the PTO must prove that consumers would be deceived in a material way.

Adherence to NAFTA required an amendment to the Lanham Act that imposed an absolute bar on the registration of geographically misdescriptive marks too. Notwithstanding the change in the law, the PTO continued to apply the same test it had used prior to the ratification of NAFTA - that is, if the PTO determined that there was a goods-place association between a mark and the place it denoted, and the goods did not emanate from that place, the mark was deemed geographically misdescriptive. Very little evidence was required to show a goods-place association, and registration was refused regardless of whether consumers were deceived.

In reversing the board's refusal to register 'California Innovations' as a trademark, the Federal Circuit recognized the inequity created by the PTO's use of the same lower standard with respect to geographically misdescriptive marks after implementation of the NAFTA amendments to the Lanham Act. Under the Federal Circuit's new test, the PTO "may not deny registration without a showing that the goods-place association made by the consumer is material to the consumer's decision to purchase those goods. This addition of a materiality inquiry equates this test with the elevated standard applied under Section 1052(a)" for deceptive marks.

Michael A Grow, Arent Fox Kintner Plotkin & Kahn PLLC, Washington DC

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