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New Test Determines Primarily Geographically Misdescriptive Marks

By Judith L. Grubner

In a decision interpreting Section 2(e)(3) of the Lanham Act (15 U.S.C. '1052(e)(3)), the Federal Circuit Court of Appeals has adopted a new three-part test to be used by the U.S. Patent and Trademark Office (PTO) in determining whether a trademark is “primarily geographically deceptively misdescriptive” (“misdescriptive”). In re California Innovations, Inc., 329 F.3d 1334 (Fed. Cir. 2003). The Federal Circuit held that the amendments to the Lanham Act resulting from the North American Free Trade Agreement (NAFTA) changed the rules under which the PTO may deny registration to misdescriptive marks.

California Innovations, Inc. (“CI”) applied to register the mark CALIFORNIA INNOVATIONS & Design for a variety of goods that did not originate in California. After the PTO refused registration based on likelihood of confusion with prior registrations, CI disclaimed “California” and amended its identification and classification of the goods. The mark was published without opposition, but the PTO later refused registration on the misdescriptiveness ground. This refusal was upheld by the Trademark Trial and Appeal Board on appeal. California Innovations, 329 F.3d at 1336. However, the Federal Circuit reversed and remanded the case to the PTO for reconsideration under a new test made necessary by the NAFTA amendments.

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