In Re Miracle Tuesday, LLC
695 F.3d 1339, 104 U.S.P.Q. 2d (BNA) 1330, 2012 U.S. App. LEXIS 20756 (2012)
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Rule of Law:
A trademark that includes a geographic location is "primarily geographically deceptively misdescriptive" and thus unregistrable if the public is likely to associate the goods with that location, the goods do not originate there, and the misrepresentation is material to the purchasing decision. A designer's historical residency in a location is insufficient to establish that the goods themselves originate there.
Facts:
- Jean-Pierre Klifa, a French citizen, lived in Paris for approximately twenty-two years until 1986.
- Klifa is the manager of Miracle Tuesday LLC, a Nevada company with its primary place of business in Miami, Florida.
- Klifa designs the goods at issue, which include handbags, wallets, and sunglasses.
- Miracle Tuesday's goods are designed in Miami and manufactured in Asia.
- Miracle Tuesday filed an application to register the trademark 'JPK PARIS 75' for its fashion accessories.
Procedural Posture:
- Miracle Tuesday LLC filed an intent-to-use application with the U.S. Patent and Trademark Office (PTO) to register the mark JPK PARIS 75.
- The PTO examining attorney issued a final decision refusing to register the mark.
- Miracle Tuesday appealed the examiner's decision to the Trademark Trial and Appeal Board (the Board).
- The Board, an administrative tribunal, affirmed the examining attorney's refusal to register.
- Miracle Tuesday (appellant) appealed the Board's decision to the U.S. Court of Appeals for the Federal Circuit.
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Issue:
Does a trademark containing the name of a city famous for the applicant's goods ('PARIS' for fashion accessories) qualify as primarily geographically deceptively misdescriptive under the Lanham Act when the goods are not designed or manufactured in that city, even if the designer once lived there?
Opinions:
Majority - O’Malley, Circuit Judge.
Yes. A trademark containing 'PARIS' for fashion accessories is primarily geographically deceptively misdescriptive when the goods have no current connection to Paris. The court applied the three-part test from In re California Innovations. First, the primary significance of the mark is a known geographic location (Paris), which was undisputed. Second, the consuming public is likely to believe the goods originate from Paris, but they do not. The court rejected the argument that the designer's past residency in Paris creates a sufficient connection, emphasizing that the statute focuses on the origin of the goods, not the designer. Third, the misrepresentation is material because Paris is famous for fashion goods, which allows the PTO to infer that the geographic association would influence a consumer's decision to purchase. Miracle Tuesday failed to provide evidence to rebut this inference.
Analysis:
This decision solidifies a strict interpretation of the 'origin' of goods in trademark law, clarifying that a designer's historical ties to a location are insufficient to create a legally cognizable goods-place connection. The court affirmed that the inquiry under the Lanham Act is focused squarely on the product's current connection to a place, not the creative force behind it. This ruling strengthens the PTO's ability to reject geographically-named marks where the connection is tenuous, thereby protecting consumers from potentially misleading branding and preserving the integrity of geographic indicators.
