In the case In re The Newbridge Cutlery Company, Appeal No. 2013-1535, (Fed. Cir. January 15, 2015) (available here), the United States Court of Appeals for the Federal Circuit overturned the Trademark Trial and Appeal Board’s decision affirming the Examiner’s refusal to register the mark NEWBRIDGE HOME. The Examiner had found that the mark NEWBRIDGE HOME in respect of silverware, jewelry, desk items and kitchenware was primarily geographically descriptive. (Applicant disclaimed “HOME” apart from the mark as a whole.) Applicant is an Irish company headquartered in Newbridge, Ireland.
The Examiner refused registration of the mark NEWBRIDGE HOME because it was primarily geographically descriptive when applied to applicant’s goods under 15 U.S.C. § 1052(e)(2). The Court went through the historical development of section 1052 (e)(2) of the Lanham Act, which emphasized the legislative intent to eliminate rejections of geographical trademarks made without reference to their connotations to consumers in association with the goods or services for which the marks are used. Accordingly, section 1052(e)(2) provides that no mark shall be refused registration unless it consists of a mark which when used on or in connection with the goods of the applicant is primarily geographically descriptive of them. In order for an Examiner to refuse registration under section 1052 (e)(2), the Examiner must show that (1) the mark sought to be registered is the name of a place known generally to the public, and (2) the public would make a goods/place association i.e. believe that the goods for which the mark is sought to be registered originate in that place, and (3) the source of the goods is the geographic region named in the mark.
As for the first prong of the test, precedent establishes that the relevant public is the purchasing public in the United States of these types of goods. As to the second prong, the Patent and Trademark Office has long held that where: (1) a location is generally known; (2) the term’s geographic significance is its primary significance; and (3) the goods do, in fact, originate from the named location, a goods/place association can be presumed.
The Federal Circuit determined that the conclusion of the Board that Newbridge, Ireland, a town of less than twenty thousand people, is a place known generally to the relevant American public is not supported by substantial evidence. The Federal Circuit focused its inquiry on what the relevant American purchaser might perceive the word “Newbridge” to mean. Mention on websites was not enough to show that it is a generally known location. The Federal Circuit noted that there is simply no evidence that the relevant American consumer would have any meaningful knowledge of all the locations mentioned in the websites cited by the PTO. Moreover, the mere entry in a gazetteer or the fact that a location is described on the internet does not necessarily evidence that a place is known generally to the relevant public. The Federal Circuit determined that Newbridge, Ireland is not generally known and that is supported by the fact that certain maps and atlases do not include it.
The Federal Circuit found that Newbridge, Ireland is not generally known and to the relevant public, the mark NEWBRIDGE is not primarily geographically descriptive of the goods.