In Re Les Halles De Paris J.V.
334 F.3d 1371, 67 U.S.P.Q. 2d (BNA) 1539, 2003 U.S. App. LEXIS 13984 (2003)
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Rule of Law:
To refuse registration of a service mark as primarily geographically deceptively misdescriptive under § 2(e)(3) of the Lanham Act, the U.S. Patent and Trademark Office (PTO) must show that the misrepresentation of geographic origin is a material factor in a consumer's decision to purchase the services, a standard that requires a heightened showing for services compared to goods.
Facts:
- Les Halles De Paris J.V. operates a restaurant in New York City.
- The restaurant, which opened as early as June 4, 1995, is named 'LE MARAIS.'
- The restaurant serves a French kosher cuisine.
- Le Marais is a well-known historic Jewish quarter in Paris, France.
- The Le Marais district in Paris is known for having fashionable boutiques, galleries, and fine restaurants.
- Les Halles' restaurant is located in New York, not in the Le Marais district of Paris.
Procedural Posture:
- Les Halles De Paris J.V. filed an application with the U.S. Patent and Trademark Office (PTO) to register the service mark 'LE MARAIS' for restaurant services.
- The PTO Examining Attorney refused to register the mark, concluding it was primarily geographically deceptively misdescriptive under § 2(e)(3) of the Lanham Act.
- After Les Halles' request for reconsideration was denied, the PTO's refusal became final.
- Les Halles (appellant) appealed the final refusal to the Trademark Trial and Appeal Board (Board).
- The Board affirmed the PTO's decision to refuse registration.
- Les Halles (appellant) then appealed the Board's decision to the U.S. Court of Appeals for the Federal Circuit.
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Issue:
To refuse registration of a service mark under Section 2(e)(3) of the Lanham Act as 'primarily geographically deceptively misdescriptive,' must the U.S. Patent and Trademark Office (PTO) show that the public's association between the services and the geographic location is a material factor in the consumer's decision to purchase those services?
Opinions:
Majority - Rader, Circuit Judge.
Yes. To deny registration under section 2(e)(3), the PTO must show that the goods-place or services-place association made by the consumer is material to the consumer’s decision to purchase. The court adopted the three-part test from In re California Innovations, holding that a mark is primarily geographically deceptively misdescriptive if: (1) the primary significance of the mark is a generally known geographic location; (2) the consuming public is likely to believe the place identified by the mark indicates the origin of the services, when it does not; and (3) the misrepresentation was a material factor in the consumer’s decision. For services, particularly restaurant services, the court held this test is harder to satisfy than for goods. Because a customer receives the service at a physical location (e.g., a restaurant in New York), they are less likely to be deceived into believing the service originates from the geographic location in the mark (e.g., Paris). Therefore, the PTO must show a 'heightened association' between the services and the place, such as proof that patrons believe the food is imported or the chefs were trained there, and that this belief is a material reason for their patronage. The Board failed to apply this materiality standard, so its decision was vacated and remanded.
Analysis:
This decision solidifies and extends the materiality requirement for geographically deceptively misdescriptive marks, first articulated in In re California Innovations, specifically to service marks. By creating a higher evidentiary burden for services than for goods, the court recognized the practical difference in how consumers perceive the origin of on-site services versus tangible products. This ruling makes it significantly more difficult for the PTO to reject service marks based on § 2(e)(3), protecting businesses that use geographic names to evoke an atmosphere or theme rather than to mislead consumers about the origin of their services. Future cases involving service marks will now require the PTO to produce concrete evidence of a 'heightened association' and prove that this association is a key factor in consumer purchasing decisions.
