For a mark to be deemed primarily geographically descriptive under Section 2(e)(2), it must be shown that (1) the mark's primary significance is a generally known geographic location; and (2) the relevant public would be likely to make a goods/place association, that is, would be likely to believe that the goods originate in the place named in the mark. When the goods do indeed come from the location named, then a goods/place association may be presumed.
However, a mark is not "primarily" geographic where the geographic meaning is minor, obscure, remote, or unconnected with the goods
There was no dispute that applicant’s goods originate in Newbridge, Ireland. Applicant maintained that Newbridge is unknown to the "mill-run American consumer." The evidence showed, however, that Newbridge is the second largest town in County Kildare and the seventeenth largest in the Republic of Ireland. It is listed in the Columbia Gazetteer of the World, and is described on the Internet as "a large commercial town with plenty of shops, coffee shops, restaurants, hotels and pubs." One of its attractions is Applicant's silverware visitor centre. Moreover, Newbridge hosts some of the most famous horse races in the world.
Applicant urged that the popularity of Newbridge is driven in large part by applicant’s presence, and that its mark has acquired secondary meaning as a sourced indicator for its products. The Examining Attorney agreed that Newbridge is "world renowned" for silverware, but she noted that Applicant "appears to have entered its goods into commerce in the United States only relatively recently," and therefore a Section 2(f) claim would not succeed. In fact, Applicant did not enter a 2(f) claim.
Finally, Applicant feebly argued that NEWBRIDGE has another meaning, which derives from the joinder of the words “new” and “bridge”: it denotes or evokes "a path from a position of lack to one of fulfillment, or a means of joining the consumer with his/her goals by means of a 'bridge' that is 'new.'" Blarney, said the Board.
To the extent the evidence of record creates a genuine issue regarding the primary significance of Newbridge in the minds of American "homeware" consumers, such that a goods/place association cannot therefore be presumed from the fact that the goods come from Newbridge, the examining attorney has presented evidence sufficient to establish that American consumers of these products would in fact make such as association. Moreover, the town of Newbridge is not sufficiently remote, minor, or obscure that the goods/place association would not be made.
And so the Board affirmed the refusal.
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TTABlog note: For a collection of Section 2(e)(2) postings, go here.
Text Copyright John L. Welch 2013.
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