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In re Newbridge Cutlery Co. - 776 F.3d 854 (Fed. Cir. 2015)


The wording of 15 U.S.C.S. § 1052(e) makes it plain that not all terms which are geographically suggestive are unregistrable. Indeed, the statutory language declares nonregistrable only those words which are primarily geographically descriptive. The word "primarily" should not be overlooked, for it is not the intent of the federal statute to refuse registration of a mark where the geographic meaning is minor, obscure, remote, or unconnected with the goods. Thus, if there be no connection of the geographical meaning of the mark with the goods in the public mind, that is, if the mark is arbitrary when applied to the goods, registration should not be refused under § 2(e)(2) of the Lanham Act.


Applicant Newbridge Cutlery Co., an Irish company headquartered in Newbridge, Ireland that designs, manufactures and sells housewares, kitchenware and silverware in the United States and elsewhere around the world under the mark NEWBRIDGE HOME, sought protection of the mark in the United States by applying for the mark’s registration. The Trademark Examiner refused to register the mark as being primarily geographically descriptive when applied to applicant’s goods under 15 U.S.C.S. § 1052(e)(2) (2012). The Board affirmed, concluding that Newbridge, Ireland, was a generally known geographic place and the relevant American public would make an association between applicant's goods and Newbridge, Ireland. The Applicant appealed.


Was the mark NEWBRIDGE HOME geographically descriptive, thereby justifying the Trademark Examiner and the Board’s refusal to register the same?




According to the Court of Appeals for the Federal Circuit, as 15 U.S.C.S. § 1052(e) used the phrase "primarily geographically" in both the descriptive and deceptively misdescriptive subsections, the court's decisions relating to one subsection inform the meaning of the other and make clear that to refuse registration under either subsection the Trademark 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. In the case at bar, the Court held that the Trademark Trial and Appeal Board erred in affirming the Trademark Examiner's refusal to register the applicant's mark as being primarily geographically descriptive when used on or in connection with the applicant's goods under 15 U.S.C.S. § 1052(e)(2) because substantial evidence did not support the conclusion that Newbridge, Ireland was a place known generally to the relevant American public.

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