Arley B. de Paris, Inc.

Trademark Trial and Appeal Board

Mar 14, 2001

No. 75618459 (T.T.A.B. Mar. 14, 2001)

03/14/01
Paper No. 9
AFD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Arley B. de Paris, Inc.
________
Serial No. 75/618,459
_______
Jay Begler of Buchanan Ingersoll for Arley B. de Paris,
Inc.
Hannah Fisher, Trademark Examining Attorney, Law Office 107
(Thomas Lamone, Managing Attorney).
_______
Before Simms, Bucher and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On January 11, 1999, Arley B. de Paris. Inc.
(applicant) filed an intent-to-use application for the mark
ARLEY B. DE PARIS for goods ultimately identified as “adult
and children’s clothing, namely, shirts, pants, dresses,
jackets, tights, socks, sweatshirts, sweatpants, scarves,
jeans, undergarments, vests, neckties, rainwear, leotards,
halter tops, hats, coverups, blouses, knickers, bodysuits,
overalls, tunics, baby bunting, bathing suits, shorts,
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/618,459
2
cloth bibs, bonnets, booties, boots, caps, sweaters,
diapers made of cloth, coats, dresses, skirts, gloves,
jumpers, jumpsuits, kimonos, leggings, dungarees, mittens,
muffs, pajamas, play suits, rompers, shoes, slippers,
sleepwear, socks, snowsuits” in International Class 25.1
Because this is an intent-to-use application, the Examining
Attorney required applicant to disclaim the term “Paris” if
the goods would come from Paris. If not, the Examining
Attorney advised applicant that a refusal under 2(e)(3) of
the Trademark Act would be made. Responding to this Office
action, applicant disclaimed the term “Paris,” but it also
stated that “it is not yet known where the goods will be
produced and manufactured.” Applicant also advised the
Examining Attorney that the mark is the French equivalent
of the English phrase “Arley B. of Paris.” Response dated
Oct. 7, 1999. At this point, the Examining Attorney made
the provisional refusal to register the mark under Section
2(e)(3) of the Trademark Act final because “it is possible
that at least some of the goods will not originate from the
renowned fashion center.” Office Action dated Dec. 16,
1999.2 After the refusal was made final, this appeal
1 Serial No. 75/618,459.
2 Applicant has not objected to the Examining Attorney making the
refusal final at this point. TMEP 1105.04(e).
Ser. No. 75/618,459
3
followed. Applicant and the Examining Attorney have
submitted briefs. An oral argument was not requested.
Our primary reviewing court has set out the standard
for determining whether a term is primarily geographically
deceptively misdescriptive:
For a mark to be primarily geographically deceptively
misdescriptive, the mark must (1) have as its primary
significance a generally known geographic place, and
(2) identify products that the purchasers are likely
to believe mistakenly are connected with that
location.
In re Wada, 194 F.3d 1297, 52 USPQ2d 1539, 1540 (Fed. Cir.
2000).
The Examining Attorney has submitted a page from
Webster’s New Geographical Dictionary, p. 927, which
identifies Paris as a city in France that is the financial,
commercial, transportation, artistic and intellectual
center of France as well as “an international fashion
center” and a major tourist center.3
Applicant has translated the mark as: “Arley B. of
Paris.” Applicant’s Appeal Brief, p. 2. Applicant has
also provided a disclaimer of the word “Paris.” Id. In
addition, applicant provided the following cryptic
explanation of the mark: “The reference to Paris is simply
3 We also take official notice, as requested by the Examining
Attorney, that fashion means “the prevailing style (as in a
dress) . . . a garment in such a style.” University Of Notre
Ser. No. 75/618,459
4
to the intended reference of an animal ‘Arley B.’ who is of
Paris and all the design elements, creative elements
emanate from Paris.” Response dated Oct. 7, 1999, p. 1.
The Examining Attorney understood the reference to Arley B.
to be a reference to a fictitious animal character. Appeal
Br. at pp. 2-3.
Because of the evidence of Paris as an international
fashion center, a major tourist center, and its distinction
as being the financial, commercial, transportation,
artistic and intellectual center of France, we have no
trouble with holding that Paris is a well-known geographic
place. We also note that in In re Sharky’s Drygoods Co.,
23 USPQ2d 1061, 1062 (TTAB 1992), we took official notice
that “Paris is a well-known geographical place.”
Therefore, it is clear that Paris is not a remote or
obscure place, a point not disputed by the applicant.
We also find that there is a goods/place relationship
between Paris and clothing inasmuch as Paris is an
international fashion center. Again, it is clear that
potential customers are likely to believe that clothing
bearing the phrase “de Paris” or its English equivalent
originates in Paris.
Dame du Lac v. J.C. Gourmet Food Imports, 213 USPQ 594, 596 (TTAB
1982), aff'd, 217 USPQ 505 (Fed. Cir. 1983).
Ser. No. 75/618,459
5
However, a mark that includes the word “Paris” would
not be refused registration if the term is used fancifully
or arbitrarily. Wada, 52 USPQ2d at 1540. In the Sharky’s
Drygoods case, we found that the mark PARIS BEACH CLUB for
T-shirts and sweatshirts resulted in an incongruous phrase,
and purchasers would likely view it as a “facetious rather
than geographic reference.” 23 USPQ2d at 1062. We do not
see any similar incongruous use of the term Paris in this
case. Applicant admits that the mark means Arley B. of
Paris. Applicant submits that purchasers will believe that
the character Arley B. comes from Paris, but they would not
believe that the goods associated with the mark come from
Paris. As in Wada, applicant has included the name of a
city that is an international fashion center in its mark.
It is hard to accept applicant’s unsupported statement that
the public would not believe that clothing sold under a
mark that includes the phrase “de Paris” comes from Paris.
A mark is primarily geographically deceptively
misdescriptive if “the public would likely believe the mark
identifies the place from which the goods originate and
that the goods do not come from there.” In re Loew’s
Theaters, 769 F.2d 764, 226 USPQ 865, 868 (Fed. Cir. 1985).
We note that there is no evidence in the file to indicate
how the goods will be marketed. However, even if we are to
Ser. No. 75/618,459
6
assume that the public would associate Arley B. with Paris,
it is not clear why the public would not also believe that
clothing associated with the character from Paris comes
from Paris. We note that applicant is seeking registration
of its mark in a typed style without any animal figure
associated with it. Its identification of goods includes a
wide range of adults’ and children’s clothing. Therefore,
as presented in this appeal, the public is likely to
believe that when the mark “Arley B. de Paris” is used on
adults’ and children’s clothes, the goods come from Paris
and the mark is primarily geographically deceptively
misdescriptive.4
We note that this is an intent to use application and
applicant has not yet used the mark; however, a refusal
under Section 2(e)(3) is still appropriate. See In re
Compagnie Generale Maritime, 993 F.2d 841, 26 USPQ2d 1652
(Fed. Cir. 1993) (French corporation, which had not used
4 With its reply brief, applicant presented four registrations
that include the phrase “de Paris” or “of Paris.” The Examining
Attorney has objected to the introduction of these registrations
because they were not timely submitted. Therefore, they are not
properly of record. TMEP 1106.07(a). We note that even if some
of the registrations supported applicant’s argument, the “PTO’s
allowance of such prior registrations does not bind the Board or
this court.” In re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564,
1566 (Fed. Cir. 2001). We also do not have the files in these
cases and thus do not know what may have led to the allowance of
these marks. A cursory review of these registrations indicates
that most were issued prior to the changes to the Trademark Act
required by NAFTA.
Ser. No. 75/618,459
7
the mark, refused registration under section 2(e)(2) and
alternatively under section 2(e)(3)). Because applicant is
a New Jersey corporation, it is reasonable to assume that
the goods would not come from Paris when applicant has not
indicated that the goods would originate from Paris.5
While the term “Paris” is geographically
misdescriptive, applicant has submitted a disclaimer of the
term Paris. Prior to the passage of the North American
Free Trade Act (NAFTA) (P.L. 103-182, 107 Stat. 2057), a
disclaimer of the geographically misdescriptive term would
have overcome the geographically misdescriptive refusal.
Prior to the implementation of the NAFTA amendments to
the Lanham Act, marks that were primarily
geographically deceptively misdescriptive could be
registered if they had acquired secondary meaning.
Additionally, even if the mark had not acquired
secondary meaning, the mark could be registered with a
disclaimer of the primarily geographically deceptively
misdescriptive terms. . . . However, with the
incorporation of the NAFTA amendments into the Lanham
Act in 1993, primarily geographically deceptively
misdescriptive marks were precluded from registration
under all circumstances, even with a showing of
secondary meaning.
Wada, 52 USPQ2d at 1541.
The U.S. Patent and Trademark Office adopted a policy
that eliminated the ability to register primarily
geographically deceptively misdescriptive marks that have
5 If the goods come from Paris, the Examining Attorney required,
and the applicant provided, a disclaimer.
Ser. No. 75/618,459
8
secondary meaning or with a disclaimer. TMEP 1210.06. The
Federal Circuit found that:
Primarily geographically deceptively misdescriptive
marks, like deceptive marks, mislead the public even
with a disclaimer. This similarity between primarily
geographically deceptively misdescriptive marks and
deceptive marks justifies similar treatment with
respect to disclaimers. . . . It would be anomalous to
prohibit registration of a primarily geographically
deceptively misdescriptive mark, but allow
registration of the same geographically deceptively
misdescriptive mark with a mere disclaimer of the
geographic element.
Wada, 52 USPQ2d at 1542.
Likewise in this case, applicant has included the name
of a city famous for fashion in its mark. The mark as a
whole would lead the public to believe that the goods come
from Paris. Therefore, it would be anomalous to permit the
registration of applicant’s mark with a disclaimer of the
term Paris.
Decision: The refusal to register the mark under
Section 2(e)(3) of the Trademark Act is affirmed.