Federal Circuit: Designer's time in Paris doesn't save JPK PARIS 75 mark from being geographically misdescriptive, unregistrable

Posted by Charles Colman

Decision Of The Day: Here's an interesting opinion from the U.S. Court of Appeals for the Federal Circuit (previously discussed here) concerning the inclusion of the word "Paris" in marks for fashion-related goods that have no substantial connection with the French city.


This matter arose when the U.S. Patent and Trademark Office Examining Attorney, and then the Trademark Trial and Appeal Board, rebuffed an applicant seeking to register a composite trademark consisting of the words JPK PARIS 45 in a stylized form, on the ground that the mark was "primarily geographically deceptively misdescriptive" of the goods at issue. The applicant pursued an appeal to the Federal Circuit (the more common of the two options available to an applicant in this situation), which ruled that the USPTO properly denied registration.


Below are some key excerpts from the Federal Circuit's full opinion, which is embedded at the bottom of this post:


"It is undisputed that Paris is famous for fashion and fashion accessories, including the types of goods identified in the application. Because relevant purchasers are likely to think of Paris as a known source for fashion accessories, we agree with the [Trademark Trial and Appeal] Board that there is sufficient evidence of a goods/place association between Paris and the goods listed….


Here, the Board found that [the applicant seeking registration of the mark 'JPK PARIS 75'] Miracle Tuesday is located in Miami, its designer is not located in Paris, and the goods at issue are designed and produced somewhere other than Paris. The Board rejected Miracle Tuesday's argument that the fact that [the designer] Mr. Klifa lived and worked in Paris for twenty-two years is sufficient to justify the conclusion that the products originated in Paris....


Regardless of whether today’s consumers consider and care about the origin of the designer of the goods they purchase, the relevant inquiry under the statute is whether there is a connection between the goods and Paris – not between the designer and Paris....


Although there is support for the proposition that goods need not be manufactured in the named place to originate there – and we do not endorse application of a contrary rule here – it is clear that there must be some other direct connection between the goods and the place identified in the mark (e.g., the place identified is where the goods are designed or distributed, where the applicant is headquartered or has its research and development facility, or where a main component of the good originates)….


Because our analysis must focus on the information provided in the application, Mr. Klifa’s early years in Paris are effectively irrelevant, and certainly insufficient to overcome a proper inference of materiality....


For the foregoing reasons, and because we find that Miracle Tuesday’s remaining arguments are without merit, we affirm the Board’s refusal to register the mark JPK PARIS 75 and design under Section 2(e)(3) [of the Lanham Act]."



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