Chief Judge Rader's Material Contribution to Geographic Indicator Analysis

• Citation: Vol. 7 No. 4
• Publication year: 2012

Washington Journal of Law, Technology and Arts Volume 7, Issue 4 Spring 2012

Chief Judge Rader's Material Contribution to Geographic Indicator Analysis

Signe H. Naeve(fn*) © Signe H. Naeve

Abstract

Geographic indicators-trademarks that use a place name to indicate goods or services-are now theoretically easier to register, even if the good or service does not actually come from that place. This shift is a result of three cases, two authored by Chief Judge Randall R. Rader of the Federal Circuit Court of Appeals (California Innovations and Les Halles), and one where he served on the panel (Spirits International). These cases made it more difficult for a trademark examiner to reject an application for a primarily geographically deceptively misdescriptive mark by adding a materiality requirement. However, raising the bar was not the intent of the North America Free Trade Agreement (NAFTA) amendments, the subject of interpretation in the case trio. This Article tracks the significant change in the analysis of geographic indicators, ultimately arguing that the Federal Circuit should take guidance from its earlier opinions, In re Wada and Save Venice, and be willing to infer materiality when a location is known for a particular good or service.

Table of Contents

Introduction .............................................................................. 468

I. Misdescriptive Geographic Indicators, No Materiality Required ............................................................................ 469

A.Geographic Indicators Pre-NAFTA ............................... 470

B.Geographic Indicators Post-NAFTA .............................. 477

II. California Innovations and Les Halles Add a Materiality Requirement ....................................................................... 481

A. California Innovations ................................................... 481

B. Les Halles ...................................................................... 483

III. Spirits International Raises the Materiality Requirement to "Substantial Number of Relevant Class" ........................ 484

IV. The Intent of NAFTA Amendments Was Not to Raise the Bar for Registration ...................................................... 486

A. NAFTA Amendments Separated Primarily Geographically Deceptively Misdescriptive Marks from Primarily Geographically Descriptive Marks ...... 488

B.NAFTA and TRIPs Mandate that Geographic Indicators Should Not Be Misleading .......................... 491

V. The Federal Circuit Should Infer Materiality if a Place Is "Known For" a Good or Service ......................................... 493

A. In re Wada .................................................................... 494

B. In re Save Venice ........................................................... 495

C. Examination Practicalities and Burden of Proof ............. 497

Conclusion ................................................................................ 498

Introduction

Chief Judge Randall R. Rader and the Federal Circuit significantly altered the analysis for one class of geographic indicators-trademarks that use a place name to indicate goods or services-when it decided a trio of trademark cases: California Innovations,(fn1) Les Halles,(fn2) and Spirits International.(fn3) Judge Rader authored the first two opinions and served on the panel that decided the third. All three cases involved challenges to proposed marks that the trademark office had rejected as primarily geographically deceptively misdescriptive. Such marks include the name of a geographic location where there is an arguably strong goods/place association, but the marks are used in connection with goods or services that do not actually come from that place. The three cases interpreted amendments to the Lanham Act as required by the North American Free Trade Agreement (NAFTA)(fn4) and reasoned that the amendments mandated the addition of a materiality requirement. This Article explains the addition of this requirement and argues that the court misinterpreted the NAFTA amendments and unnecessarily raised the standard for rejecting a primarily geographically deceptively misdescriptive mark.

I. Misdescriptive Geographic Indicators, No Materiality Required

Prior to the NAFTA amendments, there were at least five categories of geographic indicators.(fn5) The categories are confusing because "descriptive" and "deceptive" are used in multiple sections of the statute. To help put these categories in context and to start to explain some of the confusingly similar terminology, this section will describe geographic indicators from the most innocuous and easiest to register to the most deceptive and difficult to register under the following basic progression: arbitrary geographically descriptive marks > merely descriptive marks > primarily geographically descriptive marks > deceptively misdescriptive marks > primarily geographically deceptively misdescriptive marks > deceptive marks. Logically this progression makes some sense, although the statute does not follow this order.

A. Geographic Indicators Pre-NAFTA

1. (Arbitrary) Geographically Descriptive Marks

As a general matter, geographically descriptive marks are marks that incorporate a term that indicates any geographic location.(fn6) These marks are registerable without any showing of secondary meaning if they are arbitrary in the sense that no consumer would believe that the goods actually came from that place.(fn7) Typical examples are "Alaska" on bananas,(fn8) "Eskimo Pies" for ice cream bars(fn9) or "Amazon.com" for online retail services.(fn10) No one would actually believe that the bananas come from Alaska, that Eskimos were making ice cream bars, or that the online e-commerce giant's services emanated from a river in South America.(fn11) The risk of consumer confusion is extremely low in these situations and thus registration is justifiable, even without a showing of secondary meaning.(fn12)

2. Merely Descriptive (Section 2(e)(1)) and Primarily Geographically Descriptive Marks (Section 2(e)(2))

In contrast to arbitrary geographic indicators, the next categories of geographic indicators did require a showing of secondary meaning. Here the statute begins to jump around. Pre-NAFTA, Section 2(e)(1) of the Lanham Act,(fn13) encompassed two kinds of geographic indicators, marks that were merely descriptive and marks that were deceptively misdescriptive.(fn14) Pre-NAFTA, Section 2(e)(2) also encompassed two kinds of geographic indicators, marks that were "primarily geographically descriptive or deceptively misdescriptive."(fn15) These two statutory sections encompassed four categories of geographic indicators: merely descriptive, deceptively misdescriptive, primarily geographically descriptive, and primarily geographically deceptively misdescriptive. Although merely descriptive marks and deceptively misdescriptive marks both fall under Section 2(e)(1), merely descriptive marks are more closely aligned with primarily geographically descriptive marks under Section 2(e)(2). In addition, deceptively misdescriptive marks under Section 2(e)(1) are more closely aligned with primarily geographically deceptively misdescriptive marks under Section 2(e)(2). Hence the explanation of the different categories in this essay jumps back and forth between these two sections of the statute.

Merely descriptive marks are marks that fall into the "descriptive" category on the Abercrombie spectrum.(fn16) For geographic indicators, a mark that is merely descriptive is often a mark that indicates where something is from.(fn17) Examples include Idaho potatoes or Washington apples. However, trademark law recognizes a fair use defense that favors allowing retailers to accurately describe where their goods come from. As a result, before any exclusive use of a geographic term is allowed, disclaimers may be necessary, multiple producers may be allowed to use the same descriptive term, and, at a minimum, secondary meaning may need to be demonstrated.(fn18) This is the case with merely descriptive marks.

Similarly, secondary meaning is required for primarily geographically descriptive marks under Section 2(e)(2). A primarily geographically descriptive mark could be something like Seattle's Best Coffee for coffee that comes from Seattle or California Pizza Kitchen for restaurant services where customers would believe that the recipes, and possibly the food, originated in California.(fn19) Board decisions and case law suggest that merely descriptive marks differ from primarily geographically descriptive marks in that a merely descriptive mark can describe where something is from whereas a primarily geographically descriptive mark seems to indicate something more, although many commentators lump the two categories together.(fn20) The word "primarily" was added to eliminate a previous trademark office practice of refusing the registration of a mark if it could be found anywhere in an atlas.(fn21) The previous practice had developed essentially a per se rule that had led to such "absurd" results as denial of Antarctica for soda pop(fn22) or Avon for perfume.(fn23)

Similar to the arbitrary geographically descriptive marks, where no reasonable consumer would believe that the goods are associated with the place name, there is low likelihood of consumer confusion for merely...