TTABlog Test: Is AMERICAN STOGIES Primarily Geographically Deceptively Misdescriptive Of Cigars Not From The USA?

• Published date: 17 August 2022
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Wolf, Greenfield & Sacks, P.C.
• Author: Mr John L. Welch

The USPTO refused to register the proposed mark AMERICAN STOGIES for cigars [STOGIES disclaimed], deeming the mark to be primarily geographically deceptively misdescriptive under Section 2(e)(3). Applicant argued that the word "American" is not misdescriptive of its cigars because it is a legal entity in the Dominican Republic and its cigars are handmade in Nicaragua with premium Honduran and Nicaraguan long-filler tobaccos. How do you think this came out? In re Tabacalera Palma, Ltd., Serial No. 88866282 (August 15, 2022) [not precedential] (Opinion by Judge George C. Pologeorgis).

There are three elements that must be met to invoke the bar of Section 2(e)(3): (1) The primary significance of the mark is a generally known geographic location; (2) The goods do not come from the place identified in the mark, but the relevant public would be likely to believe that the goods originate there; and (3) The misrepresentation is a material factor in the purchaser's decision to buy the goods in question. In re Spirits Int'l N.V., 563 F.3d 1347, 90 U.S.P.Q.2d 1489, 1490-95 (Fed. Cir. 2009); In re California Innovations, 329 F.3d 1334, 66 U.S.P.Q.2d 1853, 1858 (Fed. Cir. 2003).

The Board noted that there was no evidence that relevant U.S. consumers would view the term "American," when used as part of a trademark, as indicating that the goods originate in countries other than the United States. Because the first and primary dictionary definition of "American" refers to the United States, the Board found that relevant consumers would reasonably believe that applicant's goods originate in the United States.

In light of the (limited) evidence that cigars are manufactured in the United States, the Board found that the relevant public is likely to believe that the goods originate in the United States.

As to materiality, however, the only evidence submitted by the USPTO comprised screenshots of a single website of a third-party cigar manufacturer in...