In re Cal. Innovations, Inc. - 329 F.3d 1334 (Fed. Cir. 2003)

Rule:

Due to the North American Fair Trade Agreement (NAFTA), Dec. 17, 1993, art. 1712, 32 I.L.M. 605, 608, changes in the Lanham Act, the Patent and Trademark Office must deny registration under 15 U.S.C.S. § 1052(e)(3) if (1) the primary significance of the mark is a generally known geographic location, (2) the consuming public is likely to believe the place identified by the mark indicates the origin of the goods bearing the mark, when in fact the goods do not come from that place, and (3) the misrepresentation was a material factor in the consumer's decision.

Facts:

California Innovations, Inc. (CA Innovations), a Canadian-based corporation, appeals the Trademark Trial and Appeal Board's refusal to register its mark - CALIFORNIA INNOVATIONS. Citing section 2(e)(3) of the Lanham Act, 15 U.S.C. § 1052(e)(3) (2000), the Board concluded that the mark was primarily geographically deceptively misdescriptive. CA Innovations challenged the refusal.

Issue:

Citing § 2(e)(3) of the Lanham Act, 15 U.S.C.S. § 1052(e)(3), did the Board err in concluding that the mark was primarily geographically deceptively misdescriptive?

Answer:

Yes

Conclusion:

Because the Board applied an outdated standard in its analysis under 15 U.S.C.S. § 1053(e)(3), the court vacated the Board's decision and remanded the case. The North American Free Trade Agreement (NAFTA), Dec. 17, 1992, art. 1712, 32 I.L.M. 605, 608, obliterated the distinction between geographically deceptive marks and primarily geographically deceptively misdescriptive marks. The test for rejecting a deceptively misdescriptive mark was no longer simple lack of distinctiveness, but the higher showing of deceptiveness. Thus, due to the NAFTA changes in the Lanham Act, the United States Patent and Trademark Office (PTO) could deny registration under § 1052(e)(3) only if (1) the primary significance of the mark was a generally known geographic location, (2) the consuming public was likely to believe the place identified by the mark indicated the origin of the goods bearing the mark, when in fact the goods did not come from that place, and (3) the misrepresentation was a material factor in the consumer's decision. The court declined to review the Board's finding at that stage when the PTO needed to apply the entire new test on remand.