The USPTO refused to register the proposed mark PARMA COFFEE for "chocolate; chocolate-based beverages; cocoa; cocoa-based beverages; coffee extracts; coffee and coffee substitutes; honey; honey substitutes; natural sweetener; sugar; tea; tea extracts; tea-based beverages; preparations for making coffee-based beverages" [COFFEE disclaimed], deeming it primarily geographically descriptive under Section 2(e)(2). Applicant conceded that Parma is an Italian city "well known for its architecture, music, art, ham and cheese," but not for the products identified in the application. How do you think this came out? In re A. ZETA S.R.L., Serial No. 88300086 (September 21, 2021) [not precedential] (Opinion by Judge Thomas W. Wellington).
The test for geographical descriptiveness under Section 2(e)(2) has three required elements:
- The mark is the name of a place known generally to the public;
- The goods for which registration is sought originate in that geographic place; and
- Purchasers would be likely to believe that the goods originate in that geographic place.
The inclusion of the generic term COFFEE in applicant's mark does not alter the Section 2(e)(2) analysis.
Under the first element of the test, the relevant inquiry is whether Parma is a generally known geographic location, not whether Parma is "known for" the identified goods. The evidence submitted by Examining Attorney Erin Falk established that "the primary meaning of Parma is to signify the city in northern Italy," a generally known geographic location.
As to the second element, the Board noted that applicant is an Italian corporation with an Italian address. Applicant did not contend that its goods do not come from Parma. Applicant admitted that its goods are being "developed" in Parma, and so the Board concluded that the goods originate in Parma.
As to the third element, since the geographic location named by the mark is not obscure, a goods/place association may be presumed from the fact that the goods originate in Parma. "Accordingly, because Applicant's goods are admittedly 'developed' in Parma, Italy, we presume that there is a goods/place association amongst the consuming public."
Applicant pointed to six third-party registrations for the mark PARMA for various goods and services, as well as its own EU registration for the proposed mark. The Board once again pointed out that each application must be examined on its own record, regardless of any earlier mistake the Office may have made in registering another mark. The EU registration, the Board observed, is irrelevant.
And so, the Board affirmed the refusal to register.
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