|Geographical Deception in Trademark Means Many Consumers Will Be Deceived|
Appeals court held that the Trademark Office needed to reconsider a trademark it had rejected for being geographically deceptive. For that to be the case, a substantial number of consumers would have to think that the foreign word used as a mark indicated that the product was connected with the foreign location word used for a mark.
Trademark; Deceptive; Doctrine of Foreign Equivalents; Review
|C A S E S U M M A R Y|
Spirits International filed an application for use of the trademark “Moskovskaya” for vodka, based on a claim of a bona fide intent to use the mark in commerce. The company noted that the vodka would not be made or sold in Moscow and had no connection to Moscow. The examining attorney refused registration. The Trademark Office issued a refusal of the registration on the ground that Moskovskaya is “geographically deceptively misdescriptive.” The examiner held that the mark was translated as “of or from Moscow” and that the public would believe the goods were from Moscow. That is relevant because Russian vodka is generally highly regarded in the U.S. Spirits filed a motion for review by the Trademark Trial and Appeal Board. The Board affirmed the decision by an examining attorney refusing to register Spirits’ mark. Spirits appealed.
Vacated and Remanded. The doctrine of foreign equivalents generally requires considering the meaning of a mark in a non-English language to the speakers of that language. Hence, foreign words are translated to English, but the doctrine is not an absolute rule. It applies only in situation where the ordinary American consumer would translate the mark into English. There may be non-English marks that will not be translated in context, but instead will be accepted at face value by the ordinary consumer. Under the Lanham Act, Congress requires that geographically deceptively misdescriptive marks materially affect the public’s decision to purchase the goods. There must be some indication that a substantial portion of the relevant consumers would be materially influenced in the decision to purchase the product by the geographic meaning. The case is remanded to determine whether there was a prima facie case of materiality of the alleged geographical deceptiveness of the mark. The question to be determined is if a substantial portion of intended consumers would likely be deceived as to the product’s geographic connections.
|Citation||In re Spirits International, 563 F.3d 1347 (Fed. Cir., 2009)|
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