U.S. Court of Appeals Raises the Standard for Rejecting "Primarily Geographically Deceptively Misdescriptive" Marks

The U.S. Court of Appeals for the Federal Circuit recently vacated the finding of the Trademark Trial and Appeal Board that the mark CALIFORNIA INNOVATIONS is "primarily geographically deceptively misdescriptive" and remanded the case for further proceedings under a new test. Before NAFTA, the Lanham Act provided that a trademark which was "primarily geographically deceptively misdescriptive" could not be registered on the principal register, unless there was evidence of acquired distinctiveness. In contrast, a mark which was "geographically deceptive" was permanently denied registration. Given that the rejection of a "deceptive" geographical mark was final, the PTO had used a higher standard to reject marks for geographical deception than deceptive misdescription. With the implementation of NAFTA, this distinction between "geographically deceptive" marks and "primarily geographically deceptively misdescriptive" marks has been obliterated. Under the amended Lanham Act, marks determined to be "primarily geographically deceptively misdescriptive" are also permanently denied registration, as are deceptive marks. Accordingly, the test for rejecting a deceptively misdescriptive mark is no longer simple lack of distinctiveness, but requires a higher showing of deceptiveness. As a result, to deny a registration for being "primarily geographically deceptively misdescriptive", the following must be shown: (1) the primary significance of the mark is a generally known geographic location, (2) the consuming public is likely to believe the place identified by the mark indicates the origin of the goods bearing the mark, when in fact the goods do not come from that place, and (3) the misrepresentation was a material factor in the consumer's decision. For the decision, visit: http://www.fedcir.gov/opinions/02-1407.doc Summary by: Hung Nguyen Interested in knowing how this case might apply to your situation? Contact Marijo Coates or Hung Nguyen .