IP Law Daily, TRADEMARK—TTAB: Examining attorney fails to show materiality of alleged geographic misrepresentation in refusing cigar brand’s mark, (Aug 17, 2022)

By Patricia K. Ruiz, J.D.

The Board found evidence submitted by the examining attorney to show materiality was mere puffery.

The Trademark Trial and Appeal Board reversed the refusal to register the standard character mark AMERICAN STOGIES for cigars on the grounds that the proposed mark is primarily geographical deceptively misdescriptive of the identified goods because the goods were not made in the United States. The Board determined the examining attorney failed to produce sufficient evidence of the alleged misrepresentation’s materiality to the consumers (In re Tabacalera Palma, Ltd., August 15, 2022, Pologeorgis, G.).

Tabacalera Palma, Ltd., sought registration on the Principal Register of the standard character mark AMERICAN STOGIES (STOGIES disclaimed) under Section 2(f) of the Trademark Act for “cigars” in International Class 34. The examining attorney refused registration on the ground that the applicant’s proposed mark is primarily geographically deceptively misdescriptive of the identified goods. Reconsideration having been denied, the applicant appealed.

Geographic misdescriptiveness. Section 2(e)(3) of the Trademark Act prohibits the registration of marks that are primarily geographically deceptively misdescriptive of the identified goods or services. A mark is primarily geographically deceptively misdescriptive if: (1) the primary significance of the mark is a generally known geographic location; (2) the goods do not come from the place named in the mark, but the relevant public would be likely to believe that the goods originate there; and (3) the misrepresentation is a material factor in the purchaser’s decision to buy the goods in question. In determining materiality, the Board looks to evidence regarding the probable reaction of purchasers to a particular geographical term when it is applied to the particular goods.

Materiality may be established inferentially based on indirect evidence such as gazetteer entries and third-party evidence. If evidence shows that the geographical area named in the mark is sufficiently known to lead purchasers to make a goods/place association, but the record does not show the relevant goods are a principal product of that geographical area, the deception will most likely be found not to be material. However, if there is evidence that they are a principal product of the geographical area named by the mark, the deception will most likely be found to be material. Additionally, evidence that a place is famous as a source of the goods at issue raises an inference in favor of materiality and supports a presumption that a substantial portion of the relevant consumers is likely to be deceived.

The examining attorney argues that the term AMERICAN in the proposed mark is likely to create the impression that the identified goods originate in the U.S. when they do not, as the applicant is a legal entity from the Dominican Republic. The examining attorney also referenced one of the specimens submitted by the applicant showing that the identified goods are handmade in Nicaragua with “premium Honduran and Nicaraguan long-filler tobaccos.” The examining attorney acknowledges the countries of Nicaragua and the Dominican Republic are part of the Americas, she argued the countries are not part of the U.S., which is the geographic location considered as America. She further maintained that the proposed AMERICAN STOGIES mark is likely to be perceived as indicating the United States as the geographic origin of the goods in question, considering the applicant is seeking registration in the U.S., where the consuming public is considered to be American. Thus, she argued, when U.S. consumers see the term AMERICAN used in connection with products marketed and sold in the U.S., when that is not the case. Finally, the examining attorney argued that a significant portion of the relevant U.S. consumers would be materially influenced in the decision to purchase the product by the geographic meaning of the proposed mark.

In response, the applicant argued the word “American” is a geographic term that includes North America, South America, Central America, and the West Indies, which encompasses Nicaragua and the Dominican Republic and that the term is not limited to only the U.S., which is evidenced in the definitions submitted by the examining attorney, as well as other evidence the applicant submitted, including information from Wikipedia, the CIA World Facebook entries for Nicaragua, the Dominican Republic, and Honduras, and the website www.nationsonline.org. Additionally, the applicant contended that the use of the traditional headdress featured on its cigar brand is not exclusive to the indigenous people of the U.S., but includes indigenous people throughout North America, South America, and the Caribbean island of Hispaniola, which is divided into Haiti and the Dominican Republic. The applicant further argued that the single piece of evidence submitted by the examining attorney is insufficient to establish that a significant portion of the relevant U.S. consumers would be materially influenced in the decision to purchase the cigars because of the geographic meaning of the proposed mark. Further, the applicant argued that the evidence, screenshots from a third-party cigar retailer, purported to show that a particular type of American cigar exists; however, the applicant argued, there is no such style of cigar and nothing in the screenshots that defines the style of an American cigar as being distinct from any other cigar. Thus, according to the applicant, the evidence does not establish a significant portion of relevant U.S. consumers would be deceived or that the geographic nature of the term American would be material to the relevant U.S. consumer’s purchasing decision.

Under the first prog of the test, whether the mark’s primary significance is a generally known geographic location, the Board found that, because the first or primary definitions of American refer to the U.S., the relevant U.S. consumers would reasonably believe the goods originated in the U.S. As to the second prong, there is limited evidence of record that cigars are manufactured in the U.S.; therefore, the relevant U.S. consuming public is likely to believe the place identified by the mark indicates the origin of the goods bearing the mark, when the goods originate from Nicaragua, not the U.S. Finally, the only evidence submitted by the examining attorney (the screenshots from a single website of a third-party cigar manufacturer in Florida) to support the contention that a significant portion of U.S. consumers would be materially influenced in the decision to purchase the applicant’s cigars in light of the geographic meaning. The Board did not find this evidence sufficient, as there is no record of how often U.S. consumers viewed the website, the screenshots are merely an advertisement, and the language used to describe the cigars are mere trade puffery—all of which fails to demonstrate that the U.S. is famous for producing a particular style of cigar and that he cigars manufactured in the U.S. are a principal product of the U.S. or are of premium quality. The Board reversed the refusal to register.

The Case is Serial No. 88866282.

Attorneys: Katrina J. Joiner for USPTO. Frank Herrera (H New Media Law) for Tabacalera Palma, Ltd.

Companies: Tabacalera Palma, Ltd.

Cases: Trademark USPTO