Mary LaFrance on the Grandfathering of Geographically Deceptively Misdescriptive Marks

Mary LaFrance on the Grandfathering of Geographically Deceptively Misdescriptive Marks


In the 1993 NAFTA Implementation Act, Congress barred the registration of primarily geographically deceptively misdescriptive marks, but grandfathered those marks that had become distinctive before this change was enacted. However, when the Federal Circuit's interpretation of these amendments is combined with the TTAB's recent decision in Beaverton Foods, it becomes difficult to see how any mark will ever qualify under the grandfather clause. Law Professor Mary LaFrance explains the dilemma now faced by applicants and the PTO, and traces it to a 2003 error in statutory interpretation by the Federal Circuit. She writes:

     In In re Beaverton Foods Inc., 2007 TTAB LEXIS 76, 84 U.S.P.Q.2d (BNA) 1253 (TTAB Aug. 13, 2007), petition for reconsideration denied, Serial No. 76624790 (TTAB Nov. 6, 2007), the Trademark Trial and Appeal Board (“TTAB” or “Board”) addressed for the first time the meaning of the grandfather clause that was added to Section 2(f) in 1993 in order to create a limited exception to the Section 2(e)(3) registration bar for “primarily geographically deceptively misdescriptive marks.” This precedential decision illustrates a serious problem for applicants, which is directly traceable to a 2003 error in statutory interpretation by the Federal Circuit.
 
     The applicant in Beaverton Foods sought to register NAPA VALLEY MUSTARD CO. as a trademark for “condiments, namely mustard.” The examiner initially refused to register the mark on the ground that, depending on where the goods originated, the mark was either “primarily geographically descriptive” under Lanham Act Section 2(e)(2), 15 U.S.C. § 1052(e)(2) or “primarily geographically deceptively misdescriptive” under Section 2(e)(3), 15 U.S.C. § 1052(e)(3). The applicant responded by declaring that the mark had become distinctive of the applicant’s goods prior to December 8, 1993, the date of enactment of the North American Free Trade Agreement Implementation Act (hereinafter the “NAFTA amendments”), so that, pursuant to Section 2(f), 15 U.S.C. § 1052(f), the mark could not be barred from registration under Section 2(e)(2) or 2(e)(3). The applicant also stated that the goods were manufactured in Oregon from seed grown in the Northern tier states and Canada, but not in the Napa Valley. The examiner then withdrew the refusals under Sections 2(e)(2) and 2(e)(3), and issued a new refusal under Section 2(a) on the ground that the mark was geographically deceptive.
 
     In its appeal to the TTAB, the applicant argued that, because its mark had become distinctive of its goods before December 8, 1993, registration for its mark could not be refused under any provision in Section 2, because the “grandfather clause” which was added to Section 2(f) by the NAFTA amendments provides that:
 
Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant's goods in commerce before the date of enactment of the North American Free Trade Agreement Implementation Act [December 8, 1993].
 
             15 U.S.C. § 1052(f) (emphasis added).

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