IP Law Daily, TRADEMARK—TTAB: Refusal of FREDERICIA housewares mark reversed; relevant public is unfamiliar with Danish city, (Apr 7, 2023)

By Robert B. Barnett Jr., J.D.

The record did support the conclusion that FREDERICIA was primarily geographically descriptive of Fredericia, Denmark, because the U.S. public does not know anything about Fredericia.

The Trademark Trial and Appeal Board has reversed the USPTO’s refusal of an application for a FREDERICIA trademark for housewares, on the ground that the mark was primarily geographically descriptive of the applicant’s goods and services, because the evidence failed to demonstrate that Fredericia is a generally known geographic location to the American housewares consumer. Fredericia is a small city in Denmark, which is both largely unknown to the American consumer and not known particularly for its housewares within the housewares industry. As a result, the FREDERICIA mark application should not have been refused (In re: Fredericia Furniture A/S, April 3, 2023, Johnson, M.).

Fredericia Furniture A/S, a furniture design firm located in Fredericia, Denmark, filed a registration for the trademark FREDERICIA for housewares, including lighting fixtures, lamps, furniture, mirrors, and picture frames. The USPTO examining attorney refused the application, citing Lanham Act Section 2(e)(2), 15 U.S.C. §1052(e)(2), because the proposed mark was primarily geographically descriptive of the applicant’s goods and services, and Lanham Act Section 6(a), 15 U.S.C. §1056(a), because the applicant failed to disclaim “Fredericia” for its goods and services.

Fredericia Furniture appealed both decisions to the Trademark Trial and Appeal Board (TTAB), which consolidated the two issues on appeal.

A term is primarily descriptive if (1) the primary significance of the term is the name of a place generally known to the public, (2) the public would make an association between the goods or services and the place named in the mark, and (3) the source of the goods or services is the geographic region named in the mark (In re: Newbridge Cutlery Co., 776 F.3d 854, 113 USPQ2d 1445, 1448-49 (Fed. Cir. 2015)).

The TTAB then launched into an examination of just how well known the city of Fredericia, Denmark, was to the “public,” which in this case is the houseware-buying U.S. consumer, consulting maps, Wikipedia entries, embassy websites, world guidebooks, and travel guides. The TTAB conclusion: The overwhelming portion of the U.S. housewares market would have no idea where Fredericia was. Fredericia, as it turns out, is the 14th largest city in Denmark, with a population of just over 40,000 residents.

Furthermore, the TTAB said, Fredericia, based on consultation with various sources, including the Disney Cruise Line website, is not known for its furniture and lighting. Guides recommend visiting it for its historical sites, including a fortress that helped the Danes defeat the Prussians in 1849, not for its houseware offerings. The TTAB noted, perhaps rather harshly, that: “None of these features or activities are such that American consumers, or American tourists who are also consumer of Applicant’s Goods and Services, would find Fredericia as a destination to visit, or particularly memorable.”

Further examination of U.S. newspaper articles about Fredericia revealed little. People of Danish ancestry make up a tiny proportion of the U.S. population. The TTAB, therefore, concluded that “this record lacks the substantial evidence necessary to support a finding that the relevant purchasing public in the United States … has been exposed to the term ‘Fredericia’ and are aware of its geographic significance.”

The TTAB thus ruled that Fredericia is not generally known in the U.S. and, because doubt exists about the primary significance of FREDERICA to the purchasing public, the doubt must be resolved in Fredericia Furniture’s favor. Furthermore, there was no need for “Fredericia” to be disclaimed because FREDERICIA was not primarily geographically descriptive. The refusal to register the mark FREDERICIA, therefore, was reversed.

The case is Serial Nos. 79310559 and 79318824.

Attorneys: Mary Frances Love and Rebeccah Gan (Muncy, Geissler, Olds & Lowe, P.C.) for Fredericia Furniture A/S. Andrew Leaser, Trademark Examining Attorney, for the USPTO.

Companies: Fredericia Furniture A/S

Cases: Trademark USPTO