Trademark: Mark is Geographically Deceptively Misdescriptive Only if Deception is Material to a Substantial Portion of the Intended Audience

pic-25.jpgIn 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

Note:

  • 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.”

18 thoughts on “Trademark: Mark is Geographically Deceptively Misdescriptive Only if Deception is Material to a Substantial Portion of the Intended Audience

  1. What to do if you are not a vodka drinker?
    Us gin drinkers now have a serious problem, we are probably contributing to some serious legal issues when we drink either London Gin or Bombay Gin, two major brands, neither of which comply with the recent ruling of the Patent Office

  2. RE: “The Patent Office refused to register Spirits’ mark “Moskavskaya” to identify the company’s vodka” — The dummies should have filed in the Trademark office.

  3. I’m curious how this opinion squares with the “doctrine of foreign equivalents” which, as I understand it, bars the registration of generic foreign terms regardless of whether the relevant American consuming public understands the word in its generic sense. This opinion seems to open up the potential for registering terms falsely claiming geographic origin so long as the claim is made in a language not understood by the product’s general consuming public. Is there some policy distinction between generic terms and falsely descriptive terms for the purposes of employing the foreign equivalents doctrine? BTW, this vodka situation seems unlike the situation of NORTH POLE as a mark for bananas where there is no goods-place association and the law regards the term as “arbitrary” and inherently distinctive rather than a false claim of geographic origin.

  4. I guess I should have said “gummy worms” to make my point, given that Russia is often depicted as a bear.

  5. Should the “materiality” prong have something to do with the nature of the goods? In my mind “Moskovskaya” gummy bears would not be as egregious a misdescription because, as far as I know, Russians aren’t known for gummy bears. Thus, the misdescription is less material. Calling something “Moskovskaya” vodka or “Caspian” caviar (if it comes from somewhere else) does seem material from the consumer’s point of view.

    By the way, it is “Moskovskaya,” “Moskavskaya,” or “Moskvaskaya”? I’m going with “Moskovskaya” because that’s what’s on the bottle and in the Fed. Cir. opinion.

  6. 6, have you heard anything about who the new guy might be? Or what kind of policy changes he might bring (you know, maybe fire those SPE’s who will never allow anything)?

    I have another question for you. Have you ever allowed any application for any reason other than “element XYZ was not shown by any prior art reference?” (this would lend further support to my idea that post KSR this is the only way that you will get anything allowed)

  7. “Ich [nicht] bin ein Berliner”

    I suppose Judge Dyk would believe that only native German speakers knew what the president was speaking of?

  8. Even though D has been posting some rather lame threads here of late I’m still going to give you guys the news first!

    That’s right, new undersec coming in within 2 weeks is what the higher ups say. There’s some real new for ya.

  9. I would guess that a large number of Americans who do not otherwise understand Russian know that “Moskva” is how Russians say “Moscow,” and would indeed believe that a vodka with a name that sounds like Moscow probably has something to do with Russia.

    Oh, after typing this I see that several others pointed out the same thing. Obviously, more IP lawyers drink vodka than TTAB judges.

  10. You don’t have to be a speaker of Russian to know the Russian word for Moscow. The word is “Moskavskaya” so that probably isn’t too big of a leap. I don’t speak Italian but I know that Rome is really Roma (Germany is Deutschland, etc). Also learners of Russian who have taken more than a week of classes probably have learned the word for Moscow, so they should add all those people to the 700,000.

    I haven’t yet read the case, but is the test “a significant portion” or “a substantial portion”? I guess maybe there the same; I would have thought substantial was of a higher degree, but Thesaurus.com say they are synonyms, so I guess not.

    I don’t typically practice in trademark law, but it seems to me the language should have absolutely no bearing. It should be translated to English and judged based upon that. I can’t trademark a generic term that’s been translated into another language even if barely any Americans know this (at least I hope), and the same should apply here.

  11. I don’t think one has to be a fluent Russian speaker to know that Moskovskaya means “of or from Moscow.” As the panel correctly notes, “it may be that some number of non-Russian speakers would understand the mark to suggest that the vodka came from Moscow…”

    My intuition is that the TTAB got it right and should reach the same conclusion on remand, but I’m not close enough to the facts of the case to hold that opinion very strongly.

  12. “The correct question may not be how many speak Russian and know the exact meaning of the term, but instead how many would associate the word with Russia and the thus be misled, thinking this was Russian vodka.”

    It is Russian vodka. It’s just not of or from Moscow.

  13. The correct question may not be how many speak Russian and know the exact meaning of the term, but instead how many would associate the word with Russia and the thus be misled, thinking this was Russian vodka.

    I bet that number is very high…

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