A federal appeals court has doused a French citizen’s application to trademark “JPK Paris 75″ for accessories because the goods aren’t linked to the City of Light and the applicant is a longtime U.S. resident.
On October 4, a unanimous panel of the U.S. Court of Appeals for the Federal Circuit affirmed a refusal to register the trademark by the Trademark Trial and Appeal Board.
The Federal Circuit agreed with the board in In Re Miracle Tuesday LLC that the mark is “primarily geographically deceptively misdescriptive.”
Miracle Tuesday filed an intent-to-use application with the U.S. Patent and Trademark Office in January 2009. The company planned to use “JPK Paris 75″ on sunglasses, wallets, handbags and purses, travel bags, suitcases, belts and shoes.
JPK stands for Jean-Pierre Klifa, Miracle Tuesday’s manager and designer. Klifa lived in Paris for about 22 years until 1986, and currently lives in the United States. Miracle Tuesday is a Nevada limited liability company with a primary place of business in Miami. Although Klifa’s trademark declaration claimed he exhibited Miracle Tuesday goods at two Paris trade shows, he did not identify which goods.
In July 2009, the PTO examining attorney denied Klifa’s registration. The examiner noted that Paris is famous for fashion and is the “primary significance” of the mark. The examiner also found that Klifa’s origin is the only connection between the goods and Paris.
In February 2011, the trademark board affirmed the decision.
Judge Kathleen O’Malley wrote the opinion, joined by Chief Judge Randall Rader and Senior Judge Richard Linn.
O’Malley noted, “the examiner found that the misrepresentation regarding the geographic origin of the goods would be a material factor in a significant portion of the relevant consumers’ decision to buy the goods.”
She then upheld the board on three grounds: The goods do not originate in Paris; the standard used to find that the use of the word “Paris” in the mark is deceptive; and scholarly articles submitted by Miracle Tuesday on consumer purchasing decisions and country of origin “are irrelevant to the proper statutory inquiry of whether the goods come from the place named by the mark.”
“Regardless of whether today’s consumers consider and care about the origin of the designer of the goods they purchase, the relevant inquiry under the statute is whether there is a connection between the goods and Paris—not between the designer and Paris,” O’Malley wrote.
O’Malley noted that the law’s focus on the geographic origin of the goods means that “Miracle Tuesday’s attempts to shift the inquiry to the historical origin of the designer must fail.”
In an emailed statement, Miracle Tuesday’ lawyer, Paul Supnik of Beverly Hills, Calif., wrote, “you could not find one who is more French or Parisian, at least to the perception of United States residents, as Jean-Pierre Klifa.… [O]ur contention is that the monogram in the mark associated with the word PARIS tells the consumer a true statement—there is a connection between JPK and PARIS, and this is not a deceptive statement. We believe to limit the concept of origin of the goods to the origin of the physical goods and not the designer is too narrow a construction of that term when the goods in question are articles of fashion. The consumer cares most especially today, not where the goods are manufactured, but the source of that design.”
The PTO declined to comment.
Deb Peckham, who co-chairs the intellectual property department at Boston-based Burns & Levinson and was not involved in the case, said,
“The board and the Federal Circuit both focused, correctly, on the association the city has with fashion design in particular to arrive at the conclusion that a fashion brand that includes Paris will convey to consumers that the products are actually made there.”
Sheri Qualters can be contacted at firstname.lastname@example.org.