The U.S. Patent and Trademark Office (“USPTO”) generally will refuse registration of a trademark that is primarily geographically descriptive. See 15 U.S.C. § 1052(e)(2).

A mark is primarily geographically descriptive if (1) “the mark sought to be registered is the name of a place known generally to the public,” (2) “the source of the goods is the geographic region named in the mark,” and (3) “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 re The Newbridge Cutlery Co., 776 F.3d 854, 860–61 (internal quotation marks omitted).

Geographically Descriptive Parma, Redux

As previously discussed, the Trademark Trial and Appeal Board (“TTAB”) had affirmed the USPTO's refusal to register the PARMA COFFEE mark for being primarily geographically descriptive. In re A. ZETA S.R.L., Ser. No. 88300086 (Sept. 21, 2021).

That TTAB decision was appealed to the U.S. Court of Appeals for the Federal Circuit, where it was affirmed. In re A. ZETA S.R.L., No. 22-1178 (Jun. 10, 2022) (nonprecedential opinion). The Federal Circuit found that the record contained substantial evidence supporting the TTAB's conclusion.

Parma is well-known to be a city in northern Italy. . . . Parma is the source of the goods, as Zeta itself stated in response to the examining attorney's inquiry. . . . Where, as here, the geographic meaning of the term to be registered is generally known, and the goods to be marked originate from the place named in the mark, the PTO may presume that the consuming public for the goods will make a goods/place association. See Newbridge, 776 F.3d at 861 (noting potential propriety of such presumption).

On appeal, Zeta also attempted to argue that the goods do not actually originate in Parma because coffee is not grown in Italy. The Federal Circuit noted this argument had not been raised before the TTAB, and there were no exceptional circumstances to justify considering such an argument on appeal.

Moreover, if we were to consider this argument, the record lacks any evidence to support it; mere attorney argument cannot suffice. See, e.g., Whitserve, LLC v. Computer Packages, Inc., 694 F.3d 10, 23 (Fed. Cir. 2012).

Accordingly, the Federal Circuit affirmed TTAB.

The attorneys at Thomas P. Howard, LLC prosecute trademark applications before the USPTO, as well as litigate in courts nationwide including in Colorado.