For A Geographically Significant Mark, The Origin Of The Designer Does Not Establish The Origin Of The Goods

In In re Miracle Tuesday, LLC, No. 11-1373 (Fed. Cir. Oct. 4, 2012), the Federal Circuit affirmed the TTAB's refusal to register the mark JPK PARIS 75 and design because it was primarily geographically deceptively misdescriptive under section 2(e)(3) of the Lanham Act, 15 U.S.C. § 1052(e)(3).

"JPK" are the initials of Jean-Pierre Klifa, who designs handbags and manages Miracle Tuesday, LLC ("Miracle Tuesday"). Mr. Klifa is a French citizen who resides in the United States, although he lived in Paris for approximately twenty-two years until 1986.

Miracle Tuesday applied to register the mark JPK PARIS 75 in connection with various fashion accessories. The examining attorney refused to register the mark on the ground that it was primarily geographically deceptively misdescriptive in relation to those goods, because the primary significance of the mark was Paris, but the goods did not geographically originate from Paris. The TTAB affirmed the examiner's decision.

On appeal, the Federal Circuit held that the mark was primarily geographically deceptively misdescriptive, and thus barred from registration. The Court first noted that a mark falls in this category if (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 to purchase the goods. The Court acknowledged that Miracle Tuesday did not challenge the TTAB's finding that the primary significance of the mark was Paris, a well-known center of design and fashion, but instead argued only the second and third elements.

"[T]he relevant inquiry under the statute is whether there is a connection between the goods and Paris – not between the designer and Paris. . . . Given the statutory focus on the geographic origin of the goods, Miracle Tuesday's attempts to shift the inquiry to the historical origin of the designer must fail." Slip op. at 9 (citation omitted).

Addressing the second element, the Federal Circuit held that Miracle Tuesday's goods did not come from the place the public would reasonably believe them to originate. The Court noted that the element involves two questions: whether there is an association between the goods and the place identified (a goods/place association) and whether the goods come from...