Geographically Descriptive Parma

By James Juo.

A trademark application may be refused by the USPTO on the ground that the proposed mark is primarily geographically descriptive of the identified goods, under Section 2(e)(2) of the Trademark Act (the “Act”), 15 U.S.C. § 2(e)(2).  The three-part test for geographical descriptiveness under Section 2(e)(2), absent a showing of acquired distinctiveness, is as follows:

  1. The mark is the name of a place known generally to the public;
  2. The goods for which registration is sought originate in that geographic place; and
  3. Purchasers would be likely to believe that the goods originate in that geographic place.

See In re Newbridge Cutlery Co., 776 F.3d 854 (Fed. Cir. 2015); In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957 (Fed. Cir. 1987); In re Broken Arrow Beef & Provision, LLC, 129 USPQ2d 1431, 1432 (TTAB 2019).

For the proposed PARMA COFFEE mark for “chocolate; chocolate-based beverages; cocoa; cocoa-based beverages; coffee extracts; coffee and coffee substitutes; honey; honey substitutes; natural sweetener; sugar; tea; tea extracts; tea-based beverages; preparations for making coffee-based beverages,” the Trademark Trial and Appeal Board (“TTAB”) of the USPTO recently affirmed that “Parma” it was primarily geographically descriptive under Section 2(e)(2). In re A. ZETA S.R.L., Serial No. 88300086 (Sept. 21, 2021).

First, as to whether “Parma” was a generally known place, the applicant conceded that it is an Italian city “well known for its architecture, music, art, ham and cheese,” but not for the products identified in the application. The TTAB, however, noted that “[t]he relevant inquiry under the first element, however, is whether PARMA is a generally known geographic location, and not whether PARMA is ‘known for’ any of the identified goods,” and held that “the primary significance of PARMA is that of a generally known geographic location, namely, a well-known city in Italy.”

Second, the applicant is an Italian corporation with an Italian address, and with the applicant’s admission of its goods being “developed” in Parma, the TTAB concluded the goods originate in in that geographic place.

Third, the USPTO merely needs to show “a reasonable predicate” for its conclusion that the public would be likely to make the particular association. In re Miracle Tuesday, LLC, 695 F.3d 1339 (Fed. Cir. 2012); In re Pacer Tech., 338 F.3d 1348 (Fed. Cir. 2003); In re Loew’s Theatres, 769 F.2d 764 (Fed. Cir. 1985). Where the geographic place is not obscure, “the goods/place association may be presumed from the fact that the goods originate in or near the place named in the mark.” In re Spirits of New Merced, LLC, 85 USPQ2d 1614, 1621 (TTAB 2007) (YOSEMITE BEER products “originate at or near” Yosemite National Park); In re Cal. Pizza Kitchen Inc., 10 USPQ2d 1704, 1706 (TTAB 1988) (“applicant’s services originate and are rendered in California”); In re Handler Fenton Westerns, Inc., 214 USPQ 848 (TTAB 1982) (DENVER WESTERNS held primarily geographically descriptive of western-style shirts originating in Denver). Accordingly, the TTAB presumed a goods/place association amongst the consuming public.

The applicant also pointed to its own EU registration for the same mark, but the TTAB held that was “irrelevant” because an applicant’s ownership of a foreign registration of its mark is immaterial to applicant’s right to register the mark in the United States, citing Double J of Broward Inc. v. Skalony Sportswear GmbH, 21 USPQ2d 1609, 1612 (TTAB 1991) and Bureau National Interprofessionnel Du Cognac v. Int’l Better Drinks Corp., 6 USPQ2d 1610, 1618 (TTAB 1988).

No evidence of alternate meanings of “parma” apparently was explored or discussed in the appeal. In addition to the Italian city, Parma also is a city in Ohio. It also apparently is slang for chicken parmigiana which is a chicken dish topped with Parmesan cheese. While the USPTO also could have rejected such alternative meanings, for an Italian company associated with Parma, Italy, facing a geographically descriptive refusal of its PARMA COFFEE mark, such alternative arguments could have changed the framework of the debate.

The trademark attorneys at Thomas P. Howard, LLC are experienced at prosecuting trademark applications before the USPTO, as well as enforcing trademarks or defending against infringement claims in litigation nationwide including in Colorado.