Federal Circuit Restates Test to Evaluate Trademarks That Use Geographic Terms

February 4, 2015

On January 15, 2015, the Federal Circuit addressed–for the first time in nearly thirty years–the standards that govern the question of whether the U.S. Patent and Trademark Office ("PTO") should register a trademark that incorporates a geographic term.  See In re The Newbridge Cutlery Company, No. 2013-1535 (Fed. Cir. Jan. 15, 2015).  In brief, the Court found that the mark NEWBRIDGE HOME was appropriate for registration because the location of the source of the goods, Newbridge, Ireland, was not a place generally known to the American public, so the mark will "primarily" identify the company that sells "Newbridge Home" goods rather than the city where they were made.  Slip op. at 16.  The opinion is also notable because it rejected the argument that information available on the Internet should automatically be accepted as evidence of the general knowledge of American purchasers.  Id. at 14.

Acknowledging the relative paucity of case law on the subject, the court delved into the policy purposes and legislative history of the provision of the Lanham Act that prohibits the registration of a mark that "when used on or in connection with the goods of the applicant is primarily geographically descriptive of them."  15 U.S.C. § 1052(e)(2).  The court explained that the Patent Office (now the PTO) historically refused trademark protection to geographic names in order to prevent one entity from registering a location name and preempting other merchants from the same region from identifying the origin of their own goods.  Slip op. at 4 (citing In re Plymouth Motor Corp., 46 F.2d 211, 213 (C.C.P.A. 1931) ("a geographical name or term, by which is meant a term denoting locality, cannot be exclusively appropriated as a trade-mark because such a term is generic or descriptive, and anyone who can do so truthfully is entitled to use it" (internal quotations omitted)), overruled on other grounds by In re Canada Dry Ginger Ale, 86 F.2d 830, 833 (C.C.P.A. 1936)).  The Federal Circuit explained that the 1946 Lanham Act codified "a more nuanced restriction that considered the primary significance of the mark when applied to the goods" and held that a geographical term should only be rejected as a trademark if the "geographical meaning is perceived by the relevant public as the primary meaning and that the geographical significance of the mark is to be assessed as it is used on or in connection with the goods." Id. at 7-8.

The Federal Circuit also examined a historic three-prong test from In re Nantucket, Inc., 677 F.2d 95 (C.C.P.A. 1982) to determine whether a trademark that includes a geographic term is likely to cause confusion as to the geographic origins of the goods sold, and found that that the Nantucket, Inc. factors should also be used to determine if a mark is "primarily geographically descriptive."  Id. at 9.  The court held the PTO should not refuse registration of the mark unless it can show that: (1) "the mark sought to be registered is the name of a place known generally to the public"; (2) "the public would make a goods/place association, i.e., believe that the goods for which the mark is sought to be registered originate in that place"; and (3) "the source of the goods is the geographic region named in the mark."  Id. at 10.

Applying this test to the facts of the case, the Federal Circuit concluded that the PTO’s Trademark Trial and Appeal Board ("Board") had erred in denying registration to the mark NEWBRIDGE HOME.  The applicant, Newbridge Cutlery Company, is an Irish company, based in Newbridge, Ireland, that makes housewares, kitchenware, and silverware.  The PTO Trademark Examiner initially refused to register the NEWBRIDGE HOME mark as being primarily geographically descriptive under 15 U.S.C. § 1052(e)(2).  The Board then affirmed, finding that Newbridge, Ireland, is a generally known geographic place and the relevant American public would make an association between the Newbridge Cutlery Company goods and Newbridge, Ireland.  Id. at 2-3. 

The Federal Circuit, in contrast, found that the Board had improperly concluded that Newbridge, Ireland, was generally known to the relevant consuming public as a geographic term simply because Newbridge is the seventeenth largest town in the Republic of Ireland, is listed in the Columbia Gazetteer of the World, and appears on a number of websites, including Wikipedia.  Id. at 12-13.  Importantly, the Court rejected the Board’s conclusion that these facts about Newbridge would be widely known to the American public simply because they are available on the Internet:  "[t]he [I]nternet (and websites such as Wikipedia) contains enormous amounts of information: some of it is generally known, and some of it is not." Id. at 13-14. 

Newbridge, the Court concluded, is not generally known to the American public despite these Internet references, because the town is not included on some maps and atlases and because the word "Newbridge" has other meanings, both geographic and non-geographic.  And because the Federal Circuit concluded that the PTO had failed to meet the first prong of the Nantucket, Inc. test, it decided that it need not address the remaining factors.

Although the question of whether the NEWBRIDGE HOME mark is primarily geographically descriptive is of greatest relevance to the company itself, the Newbridge Cutlery Company case is likely to affect future consideration of all trademarks that incorporate geographic terms.  The clear lesson is that any company that adopts a geographic term as part of its trademark should be prepared to prove that the consuming public primarily identifies the geographic term as an indicator of the company itself and not as an indication that the goods come from a particular region.  And evidence from the Internet will not be dispositive, unless it tends to demonstrate recognition among a significant part of the consuming public.   

Gibson, Dunn & Crutcher LLP     

Gibson, Dunn & Crutcher’s lawyers are available to assist in addressing any questions you may have regarding these developments.  Please contact the Gibson Dunn lawyer with whom you usually work in the firm’s Intellectual Property or Fashion, Retail and Consumer Products practice groups, or the author of this alert:

Howard S. Hogan – Washington, D.C. (202-887-3640, hhogan@gibsondunn.com)

Please also feel free to contact the following practice group leaders:

Intellectual Property Group:
Josh Krevitt – New York (212-351-2490, jkrevitt@gibsondunn.com)
Wayne Barsky - Los Angeles (310-557-8183, wbarsky@gibsondunn.com)
Mark Reiter – Dallas (214-698-3360, mreiter@gibsondunn.com)

Fashion, Retail and Consumer Products Group:
Lois F. Herzeca – New York (212-351-2688, lherzeca@gibsondunn.com)
David M. Wilf  – New York (212-351-4027, dwilf@gibsondunn.com)
Howard S. Hogan – Washington, D.C. (202-887-3640, hhogan@gibsondunn.com)

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