In Re: The Newbridge Cutlery Company
776 F.3d 854, 2015 WL 178323, 113 U.S.P.Q. 2d (BNA) 1445 (2015)
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Rule of Law:
A trademark is not "primarily geographically descriptive" unless the geographic location named in the mark is generally known to the relevant American purchasing public; the mere fact that a location can be found in a gazetteer or on the internet does not, by itself, prove it is generally known.
Facts:
- The Newbridge Cutlery Company is an Irish company headquartered in Newbridge, Ireland.
- The company designs, manufactures, and sells housewares, kitchenware, and silverware in the United States under the mark 'NEWBRIDGE HOME'.
- The company designs its products in Newbridge, Ireland, and also manufactures some, but not all, of its products there.
- In the United States, the products are sold through the company's website and in retail stores that feature products from Ireland.
- Newbridge, Ireland, is a town with a population of less than 20,000.
Procedural Posture:
- The Newbridge Cutlery Company filed an application with the U.S. Patent and Trademark Office (PTO) to register the mark 'NEWBRIDGE HOME'.
- The Trademark Examiner refused registration, concluding the mark was primarily geographically descriptive under 15 U.S.C. § 1052(e)(2).
- The applicant appealed the examiner's decision to the Trademark Trial and Appeal Board (the 'Board'), an administrative tribunal within the PTO.
- The Board affirmed the Trademark Examiner's refusal to register the mark.
- The Newbridge Cutlery Company (as appellant) appealed the Board's decision to the U.S. Court of Appeals for the Federal Circuit.
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Issue:
Is the trademark 'NEWBRIDGE HOME' unregistrable for being primarily geographically descriptive under 15 U.S.C. § 1052(e)(2) when the geographic location of Newbridge, Ireland is not a place generally known to the relevant American consuming public?
Opinions:
Majority - Linn, J.
No. The trademark 'NEWBRIDGE HOME' is not primarily geographically descriptive and is therefore registrable. To refuse registration on these grounds, the Patent and Trademark Office (PTO) must show that the primary significance of the mark is a generally known geographic location. The PTO's evidence—that Newbridge, Ireland, is the 17th largest town in Ireland, is listed in a gazetteer, and appears on Wikipedia and tourism websites—does not constitute substantial evidence that the location is 'generally known' to the relevant American public. The court rejected the notion that any information available on the internet is considered generally known, emphasizing that the standard is based on the actual knowledge of the average consumer, not what a researcher could find. Because the PTO failed to meet the first prong of the test for geographic descriptiveness, its refusal to register the mark was improper.
Analysis:
This decision significantly refines the standard for geographic descriptiveness in trademark law for the digital age. It clarifies that the 'generally known' element requires more than mere discoverability on the internet or in reference materials, setting a higher evidentiary bar for the PTO. The ruling protects trademark applicants whose marks happen to correspond with obscure or remote geographic locations, preventing registration denials based on easily accessible but not widely known information. This precedent forces a focus on the actual perception of the relevant American consumer, reinforcing that the 'primary' significance of a term must be its geographic meaning in the minds of the public.
