In a rare Section 2(e)(3) decision, the Board affirmed a refusal to register the proposed mark EMPORIO ITALIA for “bed sheets; pillow cases; comforters; bedspreads,” finding the mark to be primarily geographically deceptively misdescriptive. Applicant argued that the mark merely suggests goods of high quality or style, and that, because of the high price of Italian bedding, only a few consumers make a connection between Italy and bedding. The Board disagreed on both counts. In re Branded LLC, Serial No. 87749455 (February 14, 2020) [not precedential] (Opinion by Judge Christen M. English).

Section 2(e)(3) bars the registration of a mark that is primarily geographically deceptively misdescriptive of the identified goods or services. A mark qualifies as primarily geographically deceptively misdescriptive if:

  1. the primary significance of the mark is a generally known geographic location;
  2. the goods do not come from the place named in the mark, but the relevant public would be likely to believe that the goods originate there; and
  3. the misrepresentation is a material factor in the purchaser’s decision to buy the goods in question.

The involved application stated that “The English translation of ‘EMPORIO ITALIA’ in the mark is ‘EMPORIUM ITALY.'” There was no dispute that the doctrine of equivalents applied here. The Board found not only that those proficient in Italian would stop and translate the mark, but also that “non-Italian speaking American consumers would readily perceive the mark as ‘Emporium Italy’ because the English translation is substantially similar in appearance and sound to Applicant’s mark EMPORIO ITALY.”

As to the first prong of the test, the Board found that, considering the mark in its entirety, the primary significance of EMPORIO ITALIA is a generally known geographic location (Italy).

The evidence shows that Italy is not an obscure, remote or minor geographic location, but rather a European country with a population of more than 58 million and exports of more than $506 billion. Moreover, . . . the evidence establishes a connection between Italy and the goods covered by Applicant’s application – “bed sheets; pillow cases; comforters; bedspreads.” The word “emporia” meaning “emporium” in English is defined as “a place of commerce; trading center; marketplace” and “a large store with a wide variety of things for sale,” and merely reinforces the geographic significance of the term “Italia.”

Examining Attorney Jonathan Ryan O’Rourke submitted Internet and gazetteer evidence showing that bedding and textiles are among Italy’s main exports. The examining attorney thus met the initial burden of establishing a goods-place association between Applicant’s goods and Italy.

Applicant maintained that its mark is “suggestive, arbitrary, or fanciful, such as when a geographic mark may indicate that a product is stylish or of a high quality, i.e. HYDE PARK or NANTUCKET for clothing, and FIFTH AVENUE for a car.” The Board was unimpressed: “Because there is an association between the geographic location in Applicant’s mark and Applicant’s goods, Applicant’s mark is not suggestive, arbitrary or fanciful for Applicant’s goods.”

Applicant argued that there can be no goods-place association because Italian bedding is expensive, and “only … a very small group of people are aware of Italy producing very exclusive and expensive bedding.” However, applicant offered no evidence “that the price point of Italian bedding would affect whether consumers perceive an association between Applicant’s goods and Italy.” Moreover, the articles from national and regional newspapers in general circulation demonstrated the general public’s “exposure to an association between Italy and Applicant’s goods.”

The Board concluded that there is a goods-place association between Applicant’s goods and Italy.

The second prong of the test was met because applicant stated that “[t]he goods will come from or will originate from India. The goods are not and will not be manufactured, packaged, shipped from, sold in or have any other connection with the geographic location named in the mark.”

Finally, as to third factor, the Board concluded that applicant’s misrepresentation would be a material factor in the purchaser’s decision to buy applicant’s goods.

The dictionary definitions, gazetteer entry, third-party websites and articles summarized above establish that “Emporio Italia” means “Emporium Italy”; that Italy is a well populated European country with a large economy; that bedding and textiles used in bedding, as identified by Applicant, are principal and traditional products of Italy; and that Italy is well-known for producing high-quality bedding and textiles used in bedding. We infer from this evidence that a substantial portion of customers in the market for “bed sheets; pillow cases; comforters; bedspreads” will be motivated to purchase Applicant’s goods because of the mistaken belief that the goods originate in Italy.

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Text Copyright John L. Welch 2020.