No, it's not automatically misleading. For a name to be legally 'deceptive,' people have to actually be deceived. If customers don't associate Nantucket with shirt-making, they won't be fooled into thinking a 'NANTUCKET' shirt came from the island. The trademark office was wrong to use a simple rule that just asks if the name is a real place. The law requires looking at whether customers, seeing the brand on the product, would actually be tricked.

No, I agree with the result. The key question is always: 'what does this name tell the public about this specific product?' The government can't just say a place name is misleading. It has to provide some evidence that people might actually connect that place to that product. Since the trademark office didn't show any reason why people would think shirts come from Nantucket, it didn't prove its case.

No. I agree completely with what the other two judges wrote.

Yes, the trademark office made a mistake. They should have thought about whether people would really expect shirts to come from Nantucket Island. Just because a name is a real place doesn't automatically mean it will trick people when used for a product. We need to think about whether people would actually be fooled. There's no proof that people would think shirts with 'NANTUCKET' on them came from Nantucket Island. So the trademark office shouldn't have said no without looking into this more.

I agree that the trademark office made a mistake, but for a slightly different reason. I think the trademark office needs to show that other businesses in Nantucket might want to use 'NANTUCKET' for their shirts too. They could do this by looking in phone books to see if there are shirt companies in Nantucket. If there are, then maybe it's not fair for this one company to own the trademark. But the trademark office didn't do this research, so they didn't have a good reason to say no.

I agree with both of my colleagues for all the reasons they mentioned.

No. A mark is not primarily geographically deceptively misdescriptive unless the public associates the goods with the place named by the mark. The Trademark Trial and Appeal Board's test, which only considered whether a mark has a readily recognizable geographic meaning, was flawed because it ignored the statutory requirement to evaluate the mark 'when applied to the goods of the applicant' and rendered the word 'deceptively' superfluous. For a mark to be 'deceptively' misdescriptive, there must be a reasonable basis to believe that purchasers are likely to be deceived into thinking the goods come from the named geographic location. Because the record contains no evidence that the purchasing public would expect men's shirts to originate from Nantucket Island, buyers are not likely to be deceived, and the mark is not 'primarily geographically deceptively misdescriptive'.

No. I agree with the majority's conclusion and the requirement of a 'goods-place association,' but write separately to elaborate on the legal reasoning. The core issue is the meaning the term conveys to the public with respect to the specific goods. A geographic name is descriptive if the public would perceive it as informational about the origin of the goods. A rigid 'noted for' test (e.g., Idaho for potatoes) is too stringent; however, the PTO must present a prima facie case that a goods-place association exists or is likely to exist. This could be done by showing, for example, that other businesses in the named area deal in similar goods. Without such evidence, as in this case, the PTO fails to show that the public would be deceived.

No. I agree with the views expressed in both the majority opinion and Judge Nies's concurring opinion and therefore join both.

Yes, the Board erred in refusing registration without considering whether the public associates men's shirts with Nantucket Island. The statute requires consideration of the public's perception of the goods' geographical origin when determining if a mark is primarily geographically deceptively misdescriptive. The Board's test, which focused solely on whether the mark has a readily recognizable geographic meaning, does not track the statute. The phrase 'when applied to the goods of the applicant' in § 2(e)(2) requires considering the nature of the goods, not just the geographic meaning of the term. Additionally, the word 'deceptively' in the statute means there must be a reasonable basis for believing purchasers are likely to be deceived about the geographic origin. There is no evidence in the record that the public would expect men's shirts labeled NANTUCKET to originate from Nantucket Island. Therefore, registration cannot be refused on the ground that the mark is primarily geographically deceptively misdescriptive without such evidence.

I concur with reversing the Board's decision, but I reach this conclusion differently. The PTO must show that other businesses have or are likely to have legitimate interests in using the geographic name claimed by the applicant. Simply proving that a term is primarily geographic is not enough to make a prima facie case for refusal under § 2(e)(2). The PTO should present evidence, such as from telephone directories, showing businesses dealing in the same or related goods exist in the named area. This would establish a prima facie case that the applicant's use of the geographic term is descriptive or deceptively misdescriptive. The applicant would then have the burden to overcome this showing. If unable to do so, the applicant must resort to proof of distinctiveness under § 2(f) to secure registration.

I agree with both Chief Judge Markey's majority opinion and Judge Nies's concurring opinion and join both.

In re Nantucket Inc.

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