In re Spirits International (Fed. Cir. 2009)
The Patent Office refused to register Spirits’ mark “Moskavskaya” to identify the company’s vodka — concluding that they mark was “primarily geographically deceptively misdescriptive.”
In Russian, Spirits’ mark is translated as “of or from Moscow.” Spirits’ vodka is not from Moscow, nor is Spirits located in Moscow. According to the Patent Office, registration of the mark would be inappropriate because the public would likely believe the goods were from Moscow.
15 U.S.C. § 1052(e)(3) prohibits the registration of primarily geographically deceptively misdescriptive of the goods. The doctrine barring registration requires that the “mark’s primary significance [ be ] a generally known geographic location”; that the relevant public would be likely to believe that the goods originate from the stated geographic location (when in fact they do not); and that the deception be “material.”
The materiality requirement is new, and had not been fully interpreted by the Federal Circuit. Here, the Federal Circuit drew parallels to subsection (a) of the same statute (addressing false advertising). “Under the circumstances it is clear that section (e)(3)– like subsection (a), the false advertising provision of the cat Lanham Act, and the common law — requires that a significant portion of the relevant consuming public be deceived. That population is often the entire US population interested in purchasing the product or service.”
Missing Link: In its decision, the Board recognized that Russian speakers would be the most likely to be deceived since the geographic description was in the Russian language. Additionally, the Board identified over 700,000 Russian speakers in the US based on the 2000 census. Of course, these facts do not prove that “a significant portion of the relevant consuming public” would be deceived by the mark. Notably, the patent office offered no proof that Russian speakers constitute a “substantial portion of the intended audience.”
We note that only 0.25% of the U.S. population speaks Russian. If only one quarter of one percent of the relevant consumers was deceived, this would not be, by any measure, a substantial portion. However, it may be that Russian speakers are a greater percentage of the vodka-consuming public; that some number of non-Russian speakers would understand the mark to suggest that the vodka came from Moscow; and that these groups would together be a substantial portion of the intended audience.
Vacated and Remanded
- Some History: Spirits is a division of the SPI Group which purchased the former state-owned Russian and Baltic vodka companies. Moskavskaya brand name was introduced by the state in the 1800’s and has a long history – at least in Russia – as a brand name. A private comment indicated that the history of the Moskavskaya brand is not clear-cut. “Moskovskaya was a collective mark during Soviet times as many other mass-produces products were. After the collapse, Moskovskaya was produced not only in Russia but also in Ukraine, Belarus, Moldova and Kazakhstan.”
- Another Source: John Welch has written about Spirits’ April 28 loss at the TTAB with the following headline: TTAB Finds “RUSSKAYA” for Vodka Abandoned, Cancels Registration.
- Significant versus Substantial: As an anonymous comment noticed – the Federal Circuit appears to have used “substantial portion ” and “significant portion” interchangeably. From the case: “We hold … that the appropriate inquiry for materiality purposes is whether a substantial portion of the relevant consumers is likely to be deceived. . . . it is clear that section (e)(3) … requires that a significant portion of the relevant consuming public be deceived.”