Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE SHARKY'S DRYGOODS COMPANY
Serial No. 74/017,286
March 4, 1992
John A. Artz of Brooks & Kushman for Sharky's Drygoods Company
Robert C. Clark, Jr.
Trademark Examining Attorney
Law Office 15
(Paul Fahrenkopf, Managing Attorney)
Before Sams, Seeherman and Hohein
Opinion by Seeherman
Sharky's Drygoods Company has appealed the refusal of the Trademark Examining Attorney to register PARIS BEACH CLUB for garments, namely T-shirts and sweatshirts. [FN1] Registration has been refused pursuant to Section 2(a) of the Trademark Act, 15 U.S.C. 1052(a), on the ground that the mark is deceptive in that purchasers would mistakenly believe that applicant's goods originate in Paris, France, and that this misunderstanding would be a material factor in their purchasing decision.
In order to demonstrate that a mark is geographically deceptive the Examining Attorney must first establish that it is geographically deceptively misdescriptive by showing that the mark in question consists of or incorporates a term that denotes a geographical location which is neither obscure nor remote, that there is a goods/place association between the goods on which the mark is used and the geographical place named by the term, and that the goods do not, in fact, originate in that geographical place. See, In re Jacques Bernier Inc., 894 F.2d 389, 13 USPQ2d 1725 (Fed.Cir.1990); In re Loew's Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed.Cir.1985). In addition, the misdescription must be likely to affect the customer's purchasing decision. In re Budge Mfg. Co., Inc., 857 F.2d 773, 8 USPQ2d 1259 (Fed.Cir.1988).
Although the Examining Attorney has not submitted any evidence in support of his position, we can certainly take judicial notice that Paris is a well-known geographical place. There is also no question, in view of applicant's statements, that Paris is a center for haute couture, and that applicant's goods do not come from that city.
This is not sufficient, however, to demonstrate that PARIS BEACH CLUB is geographically deceptively misdescriptive or geographically deceptive. Not all marks which are composed of or which contain geographical terms are barred from registration by Section 2(e)(2) or 2(a) of the Act. For example, if the geographical meaning of the term is minor, obscure, remote or unconnected with the goods, the mark is treated as an arbitrary one and registration is permitted on the Principal Register. In re House of Windsor, Inc., 221 USPQ 53 (TTAB 1983). The issue is whether purchasers are likely to make a goods/place association. Thus, if purchasers would not, upon seeing the mark, conclude that it imparts information about the geographical origin of the goods, the mark is arbitrary. Id.
In this case, Paris is certainly not an obscure or remote geographical term, it being the well-known capital of France. However, the mark in question is not the word "Paris" per se; it is PARIS BEACH CLUB. Paris, of course, is not located on an ocean or lake, and does not have a beach. The juxtaposition of Paris with Beach Club results in an incongruous phrase, such that purchasers will view PARIS BEACH CLUB as a humorous mark, with the word "Paris" in the mark being a facetious rather than a geographic reference, a take-off on the fact that the city of Paris is known for haute couture. It is Paris' connection with high fashion that is intrinsic to the satire, and makes this take-off on the cachet associated therewith work. See, In re Jacques Bernier Inc., supra, in which the Court pointed out instances in which the goods/place association is not the "primary" meaning a geographic mark connotes, but instead suggests that a product is stylish or of high quality, e.g. HYDE PARK for clothing and FIFTH AVENUE for a car. See also, In re Jim Crockett Promotions Inc., 5 USPQ2d 1455 (TTAB 1987) (THE GREAT AMERICAN BASH for services of promoting, producing and presenting professional wrestling matches found suggestive of desirable quality or excellence).
*2 The dissent discounts the humorous nature of PARIS BEACH CLUB by suggesting that Parisians are capable of devising whimsical trademarks. We do not believe that the American public will engage in such an extensive analysis of the mark. Consumers, viewing the mark in connection with T-shirts and sweatshirts, will understand it to be a joke, and will not regard it as providing any information as to the nationality of the manufacturer.
The burden is on the Examining Attorney to prove that purchasers would expect that the T-shirts and sweatshirts identified in the application and sold under the mark PARIS BEACH CLUB have their origin in Paris. See, In re Venice Maid Co., Inc., 222 USPQ 618 (TTAB 1984). Here, the only "evidence" is applicant's concession and/or the judicially noticed facts that Paris is a well-known geographic place which is a center of haute couture. In view of the incongruous and humorous nature of the mark, we cannot conclude from this "evidence" that the American public would expect that T-shirts and sweatshirts bearing the mark PARIS BEACH CLUB originate in the city of Paris. Accordingly, the requisite goods/place association which is necessary for finding a mark is geographically deceptively misdescriptive or geographically deceptive is not present here.
In view of our finding that there is no goods/place association, we need not consider the third prong of the test for geographic deceptiveness, i.e., whether the misdescription is likely to affect the customer's purchasing decision.
Decision: The refusal to register is reversed.
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 74/017,286, filed January 8, 1990, and asserting first use and first use in commerce as early as December 6, 1989.
J. D. Sams
The majority have stated the proper legal test for determining whether applicant's mark "PARIS BEACH CLUB" is geographically deceptive, but, in applying the test to the mark, have arrived at an incorrect decision.
The majority find that the evidence before us is insufficient to establish the necessary goods/place association. They do not believe that a prospective purchaser encountering the mark "PARIS BEACH CLUB" on T-shirts and sweatshirts would assume that clothing bearing that mark originates in Paris. They believe, instead, that purchasers would see as a humorous incongruity the juxtaposition of "Paris," and "Beach Club," because Paris is not situated near a body of water that affords a beach.
That prospective purchasers might see humor in the mark "PARIS BEACH CLUB" does not gainsay their assuming that the clothing sold under that mark has its origin in Paris, the French being, presumably, as capable as Americans of devising whimsical or sardonic trademarks. Moreover, the label specimens of record, showing the manner in which applicant actually uses its mark "PARIS BEACH CLUB," reveal an emphasis of the word "PARIS." One such label is reproduced below:
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
*3 Applicant also submitted for the record a photograph of an item of goods sold under its mark. The photograph shows a T-shirt to which one of applicant's labels is attached. The T-shirt in the photograph is ornamented with the words "PARIS BEACH CLUB" and a design. The ornamentation on applicant's T-shirt, like the label, emphasizes the word "PARIS." The photograph is reproduced below:
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
In short, I believe purchasers would make a goods/place association between applicant's clothing bearing the "PARIS BEACH CLUB" mark and Paris, France.
I believe also that a Parisian origin for T-shirts and sweatshirts would be material to the decision to purchase applicant's goods. Applicant argues that, while Paris is a renowned center for haute couture, it can boast no such renown for the manufacture of casual clothing such as T-shirts and sweatshirts. Applicant concludes, therefore, that a prospective purchaser would be indifferent to whether a T-shirt or sweatshirt had its origin in Paris. I am not persuaded by applicant's argument. Paris has long been famous as a fashion center (and applicant would appear to admit as much, at least with respect to high fashion garments). That being the case, an item of clothing originating in Paris would be deemed desirable by purchasers, even where that item of clothing is a humble (although not necessarily cheap, I should add) T-shirt or sweatshirt.
I would affirm the refusal to register under Section 2(a).