'Paris' mark found primarily geographically deceptively misdescriptive

In In re Miracle Tuesday LLC (Case 2011-1373, October 4 2012), the US Court of Appeals for the Federal Circuit has affirmed the Trademark Trial and Appeal Board (TTAB)'s refusal to register the mark JPK PARIS 75 (and design), shown below, for sunglasses, wallets, purses, travel bags, suitcases, belts and shoes, holding that the mark was barred from registration as a primarily geographically deceptively misdescriptive mark under Section 2(3)(3) of the Lanham Act.

Under 15 USC § 1052(e)(3), a mark may not be registered on the Principal Register if it is primarily geographically deceptively misdescriptive of the applied-for goods, under the following test: (1) “the primary significance of the mark is a generally known geographic location”; (2) “the consuming public is likely to believe that the place identified by the mark indicates the origin of the goods bearing that mark”; and (3) “the misrepresentation was a material factor in the consumer’s decision” to purchase the goods (In re Cal Innovations (329 F3d 1334 (Fed Cir 2003))). 

Applicant Miracle Tuesday LLC filed an intent-to-use application for the above mark in January 2009, which was refused by the examining attorney on the ground that the mark was primarily geographically deceptively misdescriptive in relation to the identified goods. The examining attorney found that the mark’s primary significance is 'Paris', rather than 'JPK', and that the geographic location of Paris is famous for handbags and accessory goods such as those applied for under the mark; however, the only connection between the applicant’s goods and Paris is that Jean-Pierre Klifa (the applicant’s manager and the designer of the goods) lived there until 1986. The applicant is headquartered in Miami, and the goods are designed in Miami and manufactured in Asia. Because Paris is a famous source of the goods at issue, the examiner found that this misrepresentation of the geographic origin of the goods would be a material factor in a significant portion of the relevant consumers’ decision to buy the goods. 

The applicant appealed, and the TTAB affirmed the examining attorney’s refusal to register the mark. The TTAB first rejected the applicant’s argument that 'JPK', rather than 'Paris', is the dominant portion of the mark, and found that consumers seeing the word 'Paris' in the mark on the applicant’s goods would assume that such products were either designed or manufactured in Paris. The TTAB then rejected the applicant’s argument that Klifa’s background in Paris was sufficient justification for the connection, and held that a substantial portion of relevant consumers would be materially misled into believing that the goods came from Paris.

On appeal, the Federal Circuit affirmed the TTAB’s decision that the mark was primarily geographically deceptively misdescriptive. The applicant did not challenge the TTAB’s finding that the mark’s primary significance is Paris, but argued that the TTAB had erred in its findings that:

• the goods do not originate in Paris, even though their designer has significant ties to Paris; and 
• the use of the word 'Paris' in the mark is deceptive. 

For this first argument, the court noted that the second element of the primarily geographically deceptively misdescriptive test is “whether the public would reasonably identify or associate the goods sold under the mark with the geographic location contained in the mark”. This element therefore involves the questions of:

• whether there is a 'goods/place' association between the goods and the place identified in the mark; and
• whether the applicant’s goods do in fact originate from that place. 

The court noted that finding a 'goods/place' association for goods requires little more than a showing that the consumer identifies the place as a known source of the product. Therefore, the TTAB had correctly found that there was sufficient evidence that consumers identified Paris as a well-known source for fashion accessories and handbags. 

For the second aspect of the test, the court stated that 'origination' of goods from an identified place can mean that the goods are either manufactured or designed there, or that a main component or ingredient comes from the place. Here, the applicant argued that:

• the TTAB had taken an overly restrictive view of 'origination'; and
• customers are more interested in Klifa’s origination, as the goods’ designer, than in the origination of the goods themselves. 

In support of its position, the applicant referenced red carpet events where interviewers ask celebrities “who are you wearing?” rather than “where was it made?”. The court rejected this argument, holding that the relevant inquiry under the statute is whether there is a connection between the goods and Paris, not between the designer and Paris. 

The final element of a Section 2(e)(3) refusal is whether a substantial portion of relevant consumers is likely to be deceived by the mark’s misrepresented goods/place association. The Federal Circuit held in In re Spirits Int’l NV (563 F3d 1347, 1353 (Fed Cir 2009)) that, “to establish a prima facie case of materiality, there must be some indication that a substantial portion of the relevant consumers would be materially influenced in the decision to purchase the product or service by the geographic meaning of the mark”. The court has also held that the USPTO may raise an inference in favour of materiality with evidence that the place is famous as a source of the goods at issue. Here, the TTAB found that at least a substantial portion of the consumers who encounter the mark, which features the word 'Paris' on products for which Paris is a famous source location, were likely to be deceived into believing that the applicant’s products come from or were designed in Paris.  

The applicant argued that:

• the TTAB was required to find that the use of the word Paris “does in fact” deceive the public, rather than “is likely to deceive”; and
• its use of Paris does not in fact deceive consumers because there is a substantial connection between Klifa and Paris. 

The court rejected this argument, reminding the applicant that the heightened standard is required for services rather than goods (and a fashion designer is not a service provider), because geographic marks in connection with services are less likely to mislead the public than geographic marks on goods. Evidence that a place is famous as a source of those goods is therefore sufficient to raise an inference of materiality, and the TTAB had correctly held that the fact that Paris is famous for fashion goods gives rise to the inference that a substantial portion of the relevant consumers would be deceived into thinking that the goods came from Paris. 

Finally, the court rejected the applicant’s evidentiary argument that the TTAB had failed to consider certain scholarly articles about consumer purchasing decisions and 'country of origin' issues that it submitted, noting that the mere fact that the TTAB did not recite all of the evidence it considered does not mean that the evidence was not, in fact, reviewed. 

Ron N Dreben and Dana M Nicoletti, Morgan Lewis & Bockius LLP, Washington DC