IP Law Daily, TRADEMARK—TTAB: JIGUANI mark for coffee is not geographically misdescriptive, (May 1, 2023)

By Donielle Tigay Stutland, J.D.

The TTAB reversed the refusal to register the mark JIGUANI for coffee, finding the primary significance of the mark is not a generally known geographic location.

The Trademark Trial and Appeal Board has reversed the refusal to register the mark JIGUANI for “coffee” in International Class 30 after concluding that the mark was not primarily geographically deceptively misdescriptive under Section 2(e)(3) of the Trademark Act. The Board concluded that there was not enough evidence that American coffee consumers are aware that Jiguani is a town in Cuba (In re: Ruta Maya Royalty, Ltd., April 14, 2023, Wellington, T.).

Background. Ruta Maya Royalty, Ltd. applied to register the mark JIGUANI for “coffee” in International Class 30. The examining attorney refused registration of Applicant’s mark under Section 2(e)(3) of the Trademark Act, finding that the mark was primarily geographically deceptively misdescriptive of the identified goods. The Applicant appealed.

Geographically misdescriptive mark. The Board relied on Section 2(e)(3) of the Trademark Act, which prohibits the registration of marks that are primarily geographically deceptively misdescriptive of the identified goods or services. A mark is geographically deceptively misdescriptive, when the following conditions are met: (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.

The Applicant and the examining attorney did not dispute that Jiguani is a geographic location and Applicant’s coffee does not come from that location. However, the Applicant argued that Jiguani is not a “generally known” location, as required by the first element of the test. The Applicant asserted that the “vast majority of Americans have no idea where or what Jiguani is [and c]onsequently, it is almost impossible that purchasers would make a goods/place association.” Moreover, the Applicant also asserted that its use of the mark JIGUANI “was never intended to represent the origin of the coffee, but rather, as indicated clearly in language on the packaging and on Ruta Maya’s website, was intended to be a tribute to the tradition of coffee production among indigenous peoples from Cuba to the Yucatán.” Further, the Applicant argued that the relevant public “would not believe Applicant’s coffee comes from Jiguani nor would this be a material factor in their purchasing decision.”

The examining attorney had submitted evidence from THE COLUMBIA GAZETTEER OF THE WORLD. This publication describes Jiguani as having a population of 21,130 and being a “Dairying center. Also produces sugarcane, fruit, coffee, cacao.” Further, without referring to any evidence other than the Gazetteer entry and Applicant’s own packaging, the Examining Attorney asserted that “Jiguaní is [a] known location in Cuba’s major coffee-growing region, and the context in which applicant uses the mark, involving extensive references to Cuba, strongly supports a finding that consumers are likely to believe that applicant’s goods comprise Cuban coffee originating in Jiguaní.”

The TTAB noted that the relevant inquiry was: “how many coffee consumers in the U.S. know that Jiguani is a town in Cuba?” The Board found that the primary significance of JIGUANI is not a generally known geographic location.

The Board relied on In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987), where the Federal Circuit held that “it is necessary that the purchasers perceive the mark as a place name and this is where the question of obscurity or remoteness comes to the fore.” Vittel, a small town in France was the subject in that case, and when asking the question of “how many people in this country know that?” the appellate court concluded that the evidence was “insufficient to show the likelihood of [the relevant consuming public] thinking that Vittel refers to a place where the goods come from.”

Similarly in this case, upon review of the record, the Board concluded there was “not substantial evidence for the proposition that, to the relevant public, [Jiguani], is generally known.” Rather, “Jiguani appears to be only a remote and obscure town in Cuba whose existence is generally unknown to the American consumers of coffee,” the Board said. The Board reversed the refusal to register the mark JIGUANI.

The Case is Serial No. 90453034.

Attorneys: James O. Houchins (Law Office of James O. Houchins) for Ruta Maya Royalty, Ltd. Michael Fitzsimons for the USPTO.

Companies: Ruta Maya Royalty, Ltd.

MainStory: TopStory Trademark USPTO GCNNews