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In Re Miracle Tuesday

October 4, 2012

IN RE MIRACLE TUESDAY, LLC


Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board. (Serial No. 77/649,391)

The opinion of the court was delivered by: O'malley, Circuit Judge.

Before RADER, Chief Judge, LINN and O'MALLEY, Circuit Judges.

Miracle Tuesday LLC ("Miracle Tuesday") appeals from a decision of the Trademark Trial and Appeal Board ("the Board") which affirmed the trademark examining attorney's refusal to register the mark JPK PARIS 75 and design on grounds that it is primarily geographically deceptively misdescriptive under Section 2(e)(3) of the Lanham Act, 15 U.S.C. § 1052(e)(3). In re Miracle Tuesday, LLC, No. 77649391, 2011 TTAB LEXIS 32 (TTAB Feb. 3, 2011) ("Board Decision"). Because we find that the Board's refusal to register the mark was based on substantial evidence, we affirm.

BACKGROUND

On January 14, 2009, Miracle Tuesday filed an intent-to-use application with the United States Patent and Trademark Office ("PTO") seeking to register the mark JPK PARIS 75 and design, shown below, in connection with sunglasses, wallets, handbags and purses, travel bags, suitcases, belts, and shoes*fn1

The letters "JPK" are the initials of Jean-Pierre Klifa, who is the manager of Miracle Tuesday and designer of the goods at issue.

In support of its registration application, Miracle Tuesday submitted four articles discussing consumer purchasing decisions and a declaration from Mr. Klifa. The declaration explained that Mr. Klifa is a French citizen who lived in Paris for approximately twenty-two years until 1986, and currently resides in the United States. Although Mr. Klifa indicated in his declaration that he exhibited at two trade shows while in Paris, he did not identify which goods he exhibited at those shows.

On July 23, 2009, the examining attorney issued a final decision refusing to register the mark on grounds that it was "primarily geographically deceptively misdescriptive" in relation to the identified goods.*fn2 In that decision, the examiner found that: (1) the primary significance of the mark is Paris; and (2) Paris is famous for fashion, including the types of fashion accessories identified in the application. Turning to the origin of the goods identified, the examiner found that the only connection between the goods and Paris is that Mr. Klifa is Parisian. Because Paris is famous as a source of the goods at issue, the examiner found that the misrepresentation regarding the geographic origin of the goods would be a material factor in a significant portion of the relevant consumers' decision to buy the goods.

Miracle Tuesday appealed the examiner's refusal to register the mark to the Board and the Board affirmed. First, the Board pointed to several undisputed facts, including that: (1) Paris is a well-known city in France and is a center of design and fashion; (2) Miracle Tuesday is a Nevada limited liability company with its primary place of business in Miami, Florida; (3) Mr. Klifa once lived in Paris but now resides in the United States, and has done so for some time; and (4) Mr. Klifa designs handbags.

Turning to the primary significance of the mark, the Board rejected Miracle Tuesday's argument that the monogram "JPK" is the dominant portion of the mark. Instead, the Board found that the designation "Paris" in the mark "serves to identify the geographic origin of the products" such that "consumers seeing applicant's products bearing applicant's mark will assume that such products have a connection with Paris either in their manufacture or their design." Board Decision, 2011 TTAB LEXIS 32, at *5. The Board also rejected Miracle Tuesday's argument that there is a connection between the goods identified in the application and Paris solely because Mr. Klifa once lived and worked there. Finally, the Board found the evidence sufficient to show that a substantial portion of relevant consumers would be deceived into believing that the goods came from Paris. Accordingly, the Board found that the mark JPK PARIS 75 and design is primarily geographically deceptively misdescriptive as applied to Miracle Tuesday's goods.

Miracle Tuesday timely appealed to this court. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(B).

DISCUSSION

Under Section 2(e)(3) of the Lanham Act, a mark may not be registered on the principal register if the mark, "when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them." 15 U.S.C. § 1052(e)(3). A mark is primarily geographically deceptively misdescriptive, and thus barred from registration, if: (1) "the primary significance of the mark is a generally known geographic loca-tion"; (2) "the consuming public is likely to believe 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 (3) "the misrepresentation was a material factor in the consumer's decision" to purchase the goods. In re Cal. Innovations, Inc., 329 F.3d 1334, 1341 (Fed. Cir. 2003).

Whether a mark is primarily geographically deceptively misdescriptive is a question of fact. In re Save Venice N.Y., Inc., 259 F.3d 1346, 1351 (Fed. Cir. 2001). We review the Board's factual findings for substantial evidence. In re Pacer Tech., 338 F.3d 1348, 1349 (Fed. Cir. 2003) (citation omitted). Substantial evidence is defined as "more than a mere scintilla" and "such relevant evidence as a reasonable ...


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