IN RE THE NEWBRIDGE CUTLERY COMPANY (trading as Newbridge Silverware)
Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board in Serial No. 79094236.
REVERSED AND REMANDED.
PHILIP RAIBLE, Rayner Rowe LLP, of New York, New York, argued for appellant.
NATHAN K. KELLEY, Solicitor, United States Patent and Trademark Office, of Alexandria, Virginia, argued for appellee. With him on the brief were CHRISTINA J. HIEBER and THOMAS L. CASAGRANDE, Associate Solicitors.
Before PROST, Chief Judge, LINN, and HUGHES, Circuit Judges.
Linn, Circuit Judge.
The Newbridge Cutlery Company (the " applicant" ) appeals from the decision of the Trademark Trial and Appeal Board (the " Board" ) affirming the Trademark Examiner's refusal to register applicant's NEWBRIDGE HOME mark as being primarily geographically descriptive. See In re The Newbridge Cutlery Co. T/A Newbridge Silverware, Serial No. 79094236, 2013 WL 3001454 (T.T.A.B. Apr. 29, 2013) (" Board's Decision " ). Because substantial evidence fails to support the Examiner's refusal, we reverse and remand.
Applicant is an Irish company headquartered in Newbridge, Ireland, that designs, manufactures and sells housewares, kitchen ware and silverware in the United States and elsewhere around the world under the mark NEWBRIDGE HOME. Applicant designs its products in Newbridge, Ireland, and manufactures some, but not all, of its products there. See Id. at *2. In the United States, its products are available for sale through its website and through retail outlets that feature products from Ireland. See Id. at *4.
The NEWBRIDGE HOME mark is the subject of International Registration No. 1068849, which was filed through the International Bureau of the World Intellectual
Property Organization. Applicant sought protection of the mark in the United States pursuant to the Madrid Agreement and Madrid Protocol, under each of which the United States Patent and Trademark Office (" PTO" ) examines international
[113 U.S.P.Q.2d 1446] registrations for compliance with United States law. 15 U.S.C. § 1141 (2012). In so doing, applicant disclaimed the word HOME apart from the mark as a whole in the application. See Board's Decision,
Id. at *1 n.1. Applicant sought registration for various listed items of silverware, jewelry, desk items and kitchenware. See Id. at *1.
The Trademark Examiner refused to register the mark as being primarily geographically descriptive when applied to applicant's goods under 15 U.S.C. § 1052(e)(2) (2012). Id. The Board affirmed, concluding that Newbridge, Ireland, is a generally known geographic place and the relevant American public would make an association between applicant's goods and Newbridge,
Ireland. Id. at *6.
The Newbridge Cutlery Company appeals. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(B) (2012).
I. Standards of Review
The Board's interpretation of the Lanham Act is reviewed de novo. See In re Cal. Innovations, Inc., 329 F.3d 1334, 1336 (Fed. Cir. 2003). " Whether a mark is primarily geographically descriptive . . . is a question of fact." In re Compagnie Generale Mar., 993 F.2d 841, 845 (Fed. Cir. 1993). The Board's factual findings are reviewed for substantial evidence. Cal. Innovations, 329 F.3d at 1336.
II. 15 U.S.C. § 1052(e)
There have been few decisions by this court dealing with primarily geographically descriptive marks. We last discussed such marks in detail nearly thirty years ago. See In re Societe Generale Des Eaux Minerales De Vittel S.A., 824 F.2d 957 (Fed. Cir. 1987). To give context to our analysis, we ...