NOT MADE IN FRANCE does not make the Register

In In re VRBIA Inc, the US Patent and Trademark Office's (USPTO) Trademark Trial and Appeal Board (TTAB) has upheld a decision to refuse an application to register the mark NOT MADE IN FRANCE.

VRBIA Inc filed an application to register the mark NOT MADE IN FRANCE for clothing, including T-shirts, hats, armbands, headbands, socks, jackets and scarves. The USPTO's examining attorney refused registration on the grounds that VRBIA's mark, if used in connection with its goods, would be merely descriptive of them under Section 2(e)(1) of the Lanham Act. VRBIA appealed.

The TTAB dismissed the appeal and refused registration. It first stated that "a term is deemed to be merely descriptive of goods or services ... if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services". The TTAB emphasized that "it is enough that the term describes one significant attribute", such as not originating in France.

The TTAB rejected VRBIA's argument that the average consumer would view the NOT MADE IN FRANCE mark as humorous satire of the country of origin label on most goods and not a mere description of the clothing. The TTAB held that "the question of mere descriptiveness is determined on the basis of the mark itself". Pointing out that other slogans and features on the clothing were needed to establish the satire, the TTAB agreed with the examining attorney's finding that the "purchasing public would not readily associate the mark with commentary on Franco-American relations".

It is worth mentioning that the examining attorney noted in his decision that the applicant might have faced an ornamentation or informational slogan refusal if a statement of use were ever filed, since "slogans that are considered to be merely informational in nature are not registrable".

Ron N Dreben and Brendan J Hughes, Morgan Lewis & Bockius LLP, Washington DC