1210.05(c)    Determining Materiality

To establish that a geographic term is primarily geographically deceptively misdescriptive under 15 U.S.C. §1052(e)(3)   or deceptive under §2(a), it must be shown that the goods/place or services/place association made by a consumer is material to the consumer’s decision to purchase those goods/services. In re Cal. Innovations Inc., 329 F.3d 1334, 1340, 66 USPQ2d 1853, 1856 (Fed. Cir. 2003), reh’g denied, 2003 U.S. App. LEXIS 18883 (Fed. Cir. Aug. 20, 2003).

1210.05(c)(i)    Materiality In Cases Involving Goods

In determining "materiality," the Board has stated that it looks to evidence regarding the probable reaction of purchasers to a particular geographical term when it is applied to particular goods. See In re House of Windsor, Inc., 221 USPQ 53, 56 (TTAB 1983), recon. denied, 223 USPQ 191 (TTAB 1984). Materiality may be established inferentially based on indirect evidence such as gazetteer entries and third-party websites. See Corporacion Habanos, S.A. v. Guantanamera Cigars Co., 102 USPQ2d 1085, 1098 (TTAB 2012) . If the 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 that the relevant goods are a principal product of that geographical area, the deception will most likely be found not to be material. If, however, there is evidence that the relevant goods, or related goods, are a principal product of the geographical area named by the mark, then the deception will most likely be found to be material.

Furthermore, evidence that a place is famous as a source of the goods at issue raises an inference in favor of materiality. In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841, 1850 (TTAB 2012) ; see In re Les Halles De Paris J.V., 334 F.3d 1371, 1374, 67 USPQ2d 1539, 1542 (Fed. Cir. 2003). Such evidence supports a presumption that a substantial portion of the relevant consumers is likely to be deceived.

Thus, to establish the materiality element for goods, the evidence must show that:

  • The place named in the mark is famous as a source of the goods at issue;
  • The goods in question are a principal product of the place named in the mark; or
  • The goods are, or are related to, the traditional products of the place named in the mark, or are an expansion of the traditional products of the place named in the mark.

See Cal. Innovations, 329 F.3d at 1340, 66 USPQ2d at 1857; In re Save Venice N.Y., Inc., 259 F.3d 1346, 1355, 59 USPQ2d 1778, 1784 (Fed. Cir. 2001); Compania de Licores Internacionales, 102 USPQ2d at 1850; House of Windsor, 221 USPQ at 57.

Searches that combine the place name with the name of the goods and terms such as "famous," "renowned," "well-known," "noted for," "principal," or "traditional" may be useful to establish materiality. Compania de Licores Internacionales, 102 USPQ2d at 1850.

Note that in U.S. Playing Card Co. v. Harbro, LLC, 81 USPQ2d 1537, 1542 (TTAB 2006) , the Board held that the mark VEGAS was not primarily geographically deceptively misdescriptive of playing cards that do not originate in Las Vegas, finding that the opposer failed to establish that the misleading goods/place association would be a material factor in the customer’s decision to purchase the goods. The Board rejected opposer’s argument that it had met the materiality factor by proving that there is a market for cancelled casino cards from Las Vegas casinos, stating that "[a]lthough the evidence demonstrates that consumers are interested in obtaining cards that were used in casinos, the evidence does not establish that they are interested in purchasing playing cards that were manufactured or used in Las Vegas." The Board also disagreed with opposer’s contention that the goods/place association between Las Vegas and playing cards was so strong that materiality could be presumed.

1210.05(c)(ii)    Materiality In Cases Involving Services

In a case involving services, a showing that the geographic location in the mark is known for performing the service is not sufficient, unless it rises to the level of fame. This is especially true for restaurant services because, having chosen a particular restaurant, a customer is aware of the geographic location of the service and is less likely to associate the services with the place named in the mark (e.g. , a customer is less likely to identify restaurant services with a region of Paris when sitting in a restaurant in New York).

Therefore, before addressing materiality, the examining attorney must satisfy the services/place association prong by providing evidence of an additional reason for the consumer to associate the services with the geographic location invoked by the mark. For example, the examining attorney could provide evidence that a customer sitting in a restaurant in one location would believe that:

  • The food came from the place named in the mark; or
  • The chef received specialized training in the place identified in the mark; or
  • The menu is identical to a known menu from the geographic location named in the mark.

See In re Les Halles De Paris J.V., 334 F.3d 1371, 1374, 67 USPQ2d 1539, 1541–1542 (Fed. Cir. 2003); In re Consol. Specialty Rests., Inc., 71 USPQ2d 1921, 1927 (TTAB 2004) .

This heightened association between the services and geographic place named in the mark raises an inference of deception or materiality for a service mark. The Court of Appeals for the Federal Circuit has provided the following guidance regarding additional evidence that would be sufficient to satisfy the materiality element:

In any event, the record might show that customers would patronize the restaurant because they believed the food was imported from, or the chef was trained in, the place identified by the restaurant’s mark. The importation of food and culinary training are only examples, not exclusive methods of analysis….

Les Halles De Paris, 334 F.3d at 1375, 67 USPQ2d at 1542.

In Consol. Specialty Rests., Inc., the Board held COLORADO STEAKHOUSE and design primarily geographically deceptively misdescriptive of restaurant services. In the course of that holding, the Board found that a mistaken belief that the steaks served in applicant’s restaurant were from Colorado would be material to the customer’s decision to patronize the restaurant, where the record contained the following evidence: gazetteer and dictionary definitions of "Colorado" and "steakhouse;" a United States Department of Agriculture report on cattle inventory; stories excerpted from the LexisNexis® database; and Internet excerpts showing that Colorado was one of the 11 top cattle states in the United States, that Colorado was known for its steaks, that "Colorado steaks" are featured food items in restaurants outside the state, and that politicians from Colorado use "Colorado steaks" as the basis for wagers on sporting events. Id. at 1924-28. The Board stated that "an inference of materiality arises where there is a showing of a ‘heightened association’ between the services and the geographic place or, in other words, a showing of ‘a very strong services-place association.’" Id. at 1928.

See also TMEP §§1203.02–1203.02(g) regarding deceptive marks, and TMEP §1210.08 regarding geographical designations used on or in connection with wines or spirits that identify a place other than the origin of the goods.