In a recent TTAB decision, the Board found that Arcata was not primarily geographically deceptively misdescriptive of wine. The Applicant, D’Andrea Family Limited Partnership, sought to register the mark ARCATA in standard character form for “Wine” in International Class 33. In re D’Andrea Family Limited Partnership, Serial No. 85834204 (Oct. 15, 2014) [not precedential]. Originally, the Examining Attorney refused registration of the mark under the Trademark Act § 2(e)(3), 15 U.S.C. § 1052(e)(3), on that ground that the mark was primarily geographically deceptively misdescriptive of wine. Applicant filed a request for reconsideration, which the Examining Attorney denied, and a notice of appeal.
A mark that is primarily geographically deceptively misdescriptive is not registrable as per § 2(e)(3) of the Trademark Act. A mark is considered to be primarily geographically deceptively misdescriptive if:
- The primary significance of the mark is a generally known geographic location;
- The consuming public is likely to believe that 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
- The misrepresentation would be a material factor in a consumer’s decision to purchase the goods.
In re Miracle Tuesday LLC, 695 F.3d 1339, 104 USPQ2d 1330, 1332 (Fed. Cir. 2012); In re California Innovations, Inc., 329 F.3d 1334, 66 USPQ2d 1853 (Fed. Cir. 2003).
The Board found that the primary significance of ARCATA was that of a generally known geographic location (i.e., in northern California) “neither obscure nor remote”; and, while the Applicant admitted that Arcata is a geographical location within California, its wine was not produced within Arcata. In re D’Andrea Family Limited Partnership at 4. As such, the remaining questions on point were: (1) whether consumers would believe that Applicant’s wine originated from Arcata (goods/place association), and (2) whether this incorrect impression would be a material factor in consumer’s decision to purchase the goods. Id. (emphasis added).
Before examining the evidence at hand, the Board clarified the finding of a goods/place association: An actual goods/place association is not required to be established by the PTO; instead, a reasonable predicate must exist for the PTO’s conclusion that “‘the public would be likely to make the particular goods/place association on which it relies.'” Id. (citing 104 USPQ2d at 1333 (quoting In re Pacer Technology, 338 F.3d 1348, 67 USPQ2d 1629, 1631 (Fed. Cir. 2003) and In re Loew’s Theatres, Inc., 769 F. 2d 764, 226 USPQ 865, 868 (Fed. Cir 1985))). This is a significantly lower threshold. Further, the Board noted that finding a goods/place association often involves “little more” than proving a consumer identifies the place as the known source of the product. Id. at 5 (citing In re Les Halles de Paris J.V., 334 F.3d 1371, 1374 [67 USPQ2d 1539, 1541] (Fed. Cir. 2003)). This resolution is important, as the bar for determining whether a goods/place association exists is more easily met as opposed to if the bar were “an actual” goods/place association.
The Examining Attorney produced evidence of three wineries with addresses in Arcata, California (one of which had a tasting room in Arcata). In determining whether a goods/place association existed, the Board noted that it was not necessary to establish if a place was well known for the foods at issue (i.e., if Arcata was well known for wine), but it was sufficient to show only a reasonable basis to conclude that the public is likely to believe the mark at issue identifies the place of origin of the goods. Id. As a result, the Board determined that the evidence indicating Arcata is the site of several wineries was sufficient to meet the reasonable basis requirement and, thus, there was a requisite goods/place association (i.e., that a customer who saw ARCATA, the mark at issue, would likely believe the wine originated from Arcata, California).
After establishing the goods/place association, the Board moved onto the next issue: materiality, or whether a consumer’s misimpression would be a material factor in the consumer’s decision to purchase the goods. The Board noted, to establish materiality, a substantial number of “relevant” consumers must be likely to be deceived by the mark’s misrepresentation of a goods/place association (i.e., enough to lead the consumer to purchase the product). Id. at 6. Unlike the threshold in the goods/place association, the materiality test focuses on the likelihood of actually misleading the public (i.e., because the finding of a geographically deceptive misdescriptive mark precludes the mark from registration). Id.
In this particular appeal, the Board examined whether the Examining Attorney demonstrated that Arcata is “noted for” wine; that wine is a “principal product” of Arcata; that wine is a product “traditionally originating” in Arcata; or that a substantial portion of customers for wine “would be materially influenced in the decision to purchase wine by a misrepresentation that the goods originate in Arcata.” Id. at 7. To determine if the Examining Attorney met this threshold, the Board reviewed various entries for Arcata, Humboldt County, and Wine Country (California) from sources like Wikipedia and The Columbia Gazetteer. The references indicated a limited, if any, wine presence or association with the geographical location of Arcata. Even though the Examining Attorney argued that Humboldt County wines are distinctive and such characteristics of Humboldt County wines can be attributed to wines from Arcata (since Arcata is located within Humboldt County), the Board determined that the evidence submitted did not support the Examining Attorney’s contention. Specifically, the Board reasoned that evidence submitted showed that the wineries located within Arcata obtained their grapes from other regions (e.g., Napa Valley and Sonoma County), and indicated that Arcata was not suitable for grape growing. Id. at 11. Further, the Board noted that Humboldt County is “a very large area that is not particularly noted for its wines.” Id. at 12. As a result, the Board determined the record did not indicate customers would be mislead to purchase a wine because such was made from grapes grown in Arcata, thus not meeting the burden for for establishing materiality. The Board refused any determination on its behalf as to whether the name “Humboldt” would induce consumers to purchase wine, but instead maintained that the fact ARCATA is present within Humboldt County is insufficient to induce a consumer to purchase wine. Thus, the Board reversed the Examining Attorney’s refusal to register the mark ARCATA.
Based on the Board’s determination in the above appeal, it seems only likely that the Applicant will seek registration of ARCATA. Arcata is not, as the Board noted in its decision, an appellation of origin nor an American Viticultural Area (at least, not at this point in time). The above story would have likely unfolded quite differently had an appellation of origin or American Viticultural Area been involved. Despite Arcata’s current status, it is conceivable that Arcata could become an American Viticultural Area should the area meet the requirements established in 27 CFR Part 9 for petitioning to establish a new American Viticultural Area. While the current characteristics of Arcata may not meet TTB’s requirements for a new American Viticultural Area, in theory, it seems possible that Arcata could, in time, change enough so to comply with 27 CFR Part 9, estbalishing itself as an American Viticultural Area. At that point, how would a previously registered mark (i.e., such as ARCATA) come into play, especially given the facts outlined above (i.e., that the wine bearing the mark ARCATA was not produced in nor from grapes grown in Arcata)? I am sure this is a question that has been visited in the past, but I still find it rather curious how such a scenario would carry itself out.
For more information on wine or alcohol law, labeling, or trademark, please contact Lindsey Zahn.
DISCLAIMER: This blog post is for general information purposes only, is not intended to constitute legal advice, and no attorney-client relationship results. Please consult your own attorney for legal advice.