In Re: The Newbridge Cutlery Company

United States Court of Appeals
for the Federal Circuit
______________________
IN RE THE NEWBRIDGE CUTLERY COMPANY
(trading as Newbridge Silverware)
______________________
2013-1535
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in Serial No.
79094236.
______________________
Decided: January 15, 2015
______________________
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
2 IN RE THE NEWBRIDGE CUTLERY COMPANY
HOME mark as being primarily geographically descrip-
tive. See In re The Newbridge Cutlery Co. T/A Newbridge
Silverware, Serial No. 79094236, available at 2013 WL
3001454 (T.T.A.B. Apr. 29, 2013) (“Board’s Decision”).
Because substantial evidence fails to support the Exam-
iner’s refusal, we reverse and remand.
BACKGROUND
Applicant is an Irish company headquartered in New-
bridge, 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 In-
ternational Registration No. 1068849, which was filed
through the International Bureau of the World Intellectu-
al 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 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
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 New-
bridge, Ireland, is a generally known geographic place
IN RE THE NEWBRIDGE CUTLERY COMPANY 3
and the relevant American public would make an associa-
tion 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).
ANALYSIS
I. Standards of Review
The Board’s interpretation of the Lanham Act is re-
viewed de novo. See In re Cal. Innovations, Inc., 329 F.3d
1334, 1336 (Fed. Cir. 2003). “Whether a mark is primari-
ly 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 begin with a discussion of the evolution of
the current statutory framework.
A.
In various circumstances, geographical names have
long been refused trademark protection in the United
States. See, e.g., Delaware & Hudson Canal Co. v. Clark,
80 U.S. 311, 324 (1871). The Trademark Act enacted in
1905 prohibited registering any mark that was “merely a
geographical name or term.” Act of Feb. 20, 1905, ch. 592,
33 Stat. 724, 726 (repealed 1946); 15 U.S.C. § 85 (1940).
In interpreting this phrase, the Patent Office (now the
PTO), with the blessing of the courts, would reject appli-
cations upon a showing that a mark was a geographical
4 IN RE THE NEWBRIDGE CUTLERY COMPANY
name, independent of any consumer recognition of the
name. For instance, in In re Kraft-Phenix Cheese Corp.,
the Court of Customs and Patent Appeals affirmed a
rejection of CHANTELLE, a town in France, for cheese
stating:
[T]he fact that the town is little known in this
country does not change the situation. The stat-
ute, in prohibiting the registration of geographical
terms made no exemption in favor of those which
lacked importance or of those which were not well
known by the people in this country. The Patent
Office and the courts are not privileged to read
unwarranted exemptions into the act.
120 F.2d 391, 392 (C.C.P.A. 1941) (citing cases); see also
In re Nisley Shoe Co., 58 F.2d 426, 427 (C.C.P.A. 1932)
(explaining that the analogous provision preventing
registration of a mark “which consists merely in the name
of an individual,” 15 U.S.C. § 85 (1940), “makes no excep-
tion in the case of uncommon or rare names”). See gener-
ally 2 J.T. McCarthy, Trademarks & Unfair Competition
§ 14:27 (4th ed. 2014) (“McCarthy”). The policy rationale
for refusing to register such marks was that allowing such
registration would preempt other merchants from the
named location from identifying the origin of their own
goods. See, e.g., In re Plymouth Motor Corp., 46 F.2d 211,
213 (C.C.P.A. 1931) (“a geographical name or term, by
which is meant a term denoting locality, cannot be exclu-
sively appropriated as a trade-mark because such a term
is generic or descriptive, and any one who can do so
truthfully is entitled to use it” (internal quotations omit-
ted)), overruled on other grounds by In re Canada Dry
Ginger Ale, 86 F.2d 830, 833 (C.C.P.A. 1936); accord
Canada Dry, 86 F.2d at 831 (quoting Delaware & Hudson
Canal, 80 U.S. at 324).
In 1938, Congressman Lanham proposed major
amendments to the Trademark Act. See H.R. 9041, 75th
IN RE THE NEWBRIDGE CUTLERY COMPANY 5
Cong. (3rd Sess.) (Jan. 19, 1938). With regard to geo-
graphical marks, he originally proposed prohibiting the
registration of any mark that “has merely a descriptive or
geographical meaning,” id. § 3(e), thus keeping the law of
geographic marks essentially unchanged. In discussing
this section, Mr. Edward S. Rogers, “who played a signifi-
cant role in drafting the Lanham Act,” In re Nantucket,
Inc., 677 F.2d 95, 107 (C.C.P.A. 1982) (Nies, J., concur-
ring) (citing S.P. Ladas, The Contribution of Edward S.
Rogers in the Int’l Field of Industrial Property, 62 Trade-
mark Rep. 197 (1972) 1), claimed that the 1905 statute,
preventing registration on “merely geographical names,”
was “very troublesome.” Hearings on H.R. 9041 Before
the Subcomm. On Trade-marks of the House Comm. on
Patents, 75th Cong., 3rd Sess. at 71 (1938). According to
Mr. Rogers:
The present construction of the Patent Office of
that language is that they take a word without
reference to its connotation, and if it appears in
the atlas anywhere as the name of a place, or if it
appears in the Postal Guide they say that is a ge-
ographical name or term, and hence is not regis-
trable.
Id. at 71–72. The next year, Congressman Lanham
proposed an amended bill that would prevent registration
for “a mark which, when applied to the goods of the
applicant, has merely a descriptive or geographical, and
no other, meaning.” H.R. 4744, 76th Cong. (1st Sess.)
§ 2(e) (Mar. 3, 1939) (emphasis added). In discussing this
language, Mr. Rogers reiterated the problem of where to
draw the line on the registrability of geographical names,
1 Judge Nies may have meant to reference W.J.
Derenberg, The Contribution of Edward S. Rogers to the
Trademark Act of 1946 in Historical Perspective, 62
Trademark Rep. 189 (1972), which is more on point.
6 IN RE THE NEWBRIDGE CUTLERY COMPANY
and suggested amending the statute to prevent registra-
tion of marks, which, “when applied to the goods of the
applicant, [are] primarily geographical and descriptive of
them.” Hearings on H.R. 4744 before the Subcomm. on
Trade-Marks of the House Comm. on Patents, 76th Cong.,
1st Sess. 19 (Mar. 28, 1939) (emphasis added). The next
day, at the behest of Congressman Lanham, Mr. Rogers
read into the record an amended version of this section,
which, inter alia, would prevent registration of a mark
which, “[w]hen applied to the goods of the applicant is
primarily geographically descriptive of them.” See id. at
39 (Mar. 29, 1939). When Congressman Lanham reintro-
duced the bill later that year, he used this language, see
H.R. 6618, 76th Cong. (1st Sess.) § 2(e) (June 1, 1939),
and this language survived in the statute as enacted. In
addition, the statute was subsequently amended to also
refuse registration for primarily geographically deceptive-
ly misdescriptive marks. See Nantucket, 677 F.2d at 108–
11 (Nies, J., concurring) (describing this legislative histo-
ry).
Thus, in the Lanham Act, section 1052(e) instructed
the PTO to refuse to register a mark if, “when applied to
the goods of the applicant it is primarily geographically
descriptive or deceptively misdescriptive of them.”
§ 1052(e)(2) (1946). Both primarily geographically de-
scriptive and deceptively misdescriptive marks could be
registered, however, if they acquired distinctiveness. See
id. § 1052(f). In sum:
“The 1946 Lanham Act steered away from the pri-
or practice of looking a word up in an atlas or gaz-
etteer and then refusing registration if there was
any place on earth called by that word.”
IN RE THE NEWBRIDGE CUTLERY COMPANY 7
In re Jacques Bernier, Inc., 894 F.2d 389, 391 (Fed. Cir.
1990) (quoting 1 McCarthy § 14:10, at 647 (2d. ed. 1984))2
(internal ellipses removed). Thus, while the genesis of the
refusal to register geographical names was to prevent a
first registrant from preempting all other merchants from
identifying the source of their goods, the focus of the 1946
Lanham Act moved to a more nuanced restriction that
considered the primary significance of the mark when
applied to the goods.
Congress later replaced the phrase “when applied to
the goods of the applicant” with “when used on or in
connection with the goods of the applicant.” 15 U.S.C. §
1052(e)(2) (1988). The legislative history of these revi-
sions explains that these changes were “not substantive
and [were] not intended to change the law.” S. Rep. No.
100-515, at 22, reprinted in 1988 U.S.C.C.A.N. 5577, 5584
(discussing the identical amendments in § 1051); id. at 27,
1988 U.S.C.C.A.N. at 5590 (analogizing the § 1051 and
§ 1052(e) amendments).
Finally, in 1993, following the United States’ entry in-
to the North American Free Trade Agreement, Dec. 17,
1992, art. 1712, 32 I.L.M. 605 (hereinafter “NAFTA”),
§ 1052(e) was amended to essentially its current form, in
which primarily geographically descriptive marks and
primarily geographically deceptively misdescriptive
marks are divided into two subsections, (e)(2) and (e)(3),
respectively, with the latter now foreclosed from registra-
tion even if acquired distinctiveness is shown. See 15
U.S.C. § 1052(f) (2012). The legislative history of the
1993 NAFTA amendments explains that “[t]he law as it
relates to ‘primarily geographically descriptive’ marks
would remain unchanged.” 139 Cong. Rec. 30,237 (1993),
quoted in Cal. Innovations, 329 F.3d at 1339–40.
2 The most recent edition includes this discussion at
2 McCarthy § 14:27 (4th ed. 2014).
8 IN RE THE NEWBRIDGE CUTLERY COMPANY
While the 1993 amendments have now foreclosed reg-
istration of geographically deceptively misdescriptive
marks, they made no distinction, in geographical signifi-
cance, between geographically descriptive marks and
geographically deceptively misdescriptive marks. Under
the statute, it is clear that refusal to register extends
under both subsections (e)(2) and (e)(3) only to those
marks for which the geographical meaning is perceived by
the relevant public as the primary meaning and that the
geographical significance of the mark is to be assessed as
it is used on or in connection with the goods.
B.
This court’s predecessor provided considerable guid-
ance in interpreting the statutory language relating to
primarily geographical marks in Nantucket, a pre-NAFTA
case dealing with primarily geographically deceptively
misdescriptive marks. See 677 F.2d 95. The PTO rejected
the mark NANTUCKET for shirts because it considered
the mark primarily geographically deceptively misde-
scriptive, as the “term NANTUCKET has a readily recog-
nizable geographic meaning, and no alternative non-
geographic significance.” Id. at 97 (quoting Nantucket,
209 U.S.P.Q. 868, 871 (T.T.A.B. 1981)) (internal citations
removed). The Court of Customs and Patent Appeals
reversed, concluding that there was no showing of an
association in the public’s mind between the place, i.e.,
Nantucket, and the marked goods, i.e., the shirts. See id.
at 101. The court explained:
“The wording of [§ 1052(e)] makes it plain that not
all terms which are geographically suggestive are
unregistrable. Indeed, the statutory language de-
clares nonregistrable only those words which are
‘primarily geographically descriptive.’ The word
‘primarily’ should not be overlooked, for it is not
the intent of the federal statute to refuse registra-
tion of a mark where the geographic meaning is
IN RE THE NEWBRIDGE CUTLERY COMPANY 9
minor, obscure, remote, or unconnected with the
goods. Thus, if there be no connection of the geo-
graphical meaning of the mark with the goods in
the public mind, that is, if the mark is arbitrary
when applied to the goods, registration should not
be refused under § 2(e)(2).”
Id. at 99 (quoting World Carpets, Inc. v. Dick Littrell’s
New World Carpets, 438 F.2d 482, 486 (5th Cir. 1971))
(emphasis and internal citations omitted).
Nantucket’s requirement that the mark be “connected”
with the goods flowed, in part, from the statutory re-
quirement that the mark has to be primarily geograph-
ically descriptive or deceptively misdescriptive “when
applied to the goods of the applicant.” Id. at 98; In re
Loew’s Theatres, Inc., 769 F.2d 764, 767 (Fed. Cir. 1985).
The rationale for allowing registration of marks that
relevant consumers do not view as primarily geographic is
that the consumer would consider such marks “arbitrary.”
Nantucket, 677 F.2d at 100 n.8 (quoting Restatement
(First) of Torts § 720 cmt. d). See also Restatement (First)
of Torts § 720 cmt. c (expounding on the rationale). That
the phrase “when applied to the goods of the applicant”
was replaced, in 1988, with the phrase “when used on or
in connection with,” did not change the law. Nantucket’s
interpretation of § 1052(e) is bolstered by the legislative
history, which indicates that this section was introduced
to eliminate rejections of geographical trademarks made
without reference to their connotations to consumers in
association with the goods or services for which the marks
are used.
Since Nantucket, this court has set out specific re-
quirements for determining whether a mark is primarily
geographically descriptive or primarily geographically
deceptively misdescriptive. As the statute uses the
phrase “primarily geographically” in both the descriptive
and deceptively misdescriptive subsections, this court’s
10 IN RE THE NEWBRIDGE CUTLERY COMPANY
decisions relating to one subsection inform the meaning of
the other and make clear that to refuse registration under
either subsection the Trademark Examiner must show
that: (1) “the mark sought to be registered is the name of
a place known generally to the public,” Vittel, 824 F.2d at
959, and (2) “the public would make a goods/place associa-
tion, i.e., believe that the goods for which the mark is
sought to be registered originate in that place.” Id.
Accord In re Miracle Tuesday, LLC, 695 F.3d 1339, 1343
(Fed. Cir. 2012) (describing analogous factors for primari-
ly geographically deceptively misdescriptive marks)
(citing Cal. Innovations, 329 F.3d at 1341).
To refuse registration of a mark as being primarily
geographically descriptive, the PTO must also show that
(3) “the source of the goods is the geographic region
named in the mark.” Bernier, 894 F.2d at 391. Accord
Trademark Manual of Examining Procedure (“TMEP”)
§ 1210.01(a). In applying prongs (1) and (2) of this test,
our precedent establishes that the relevant public is the
purchasing public in the United States of these types of
goods. As we made clear in Vittel, “we are not concerned
with the public in other countries.” Vittel, 824 F.2d at
960. Accord Institut National Des Appellations D’Origine
v. Vintners Int’l Co., 958 F.2d 1574, 1580–81 (Fed. Cir.
1992).
Regarding the first prong of the test, that the popula-
tion of the location is sizable and/or that members of the
consuming public have ties to the location (to use the
example in Loew’s: that Durango, Mexico, would be recog-
nized by “the Mexican population of this country”) is
evidence that a location is generally known. See Loew’s,
769 F.2d at 766, 768. By contrast, that the geographic
meaning of a location is “minor, obscure [or] remote”
indicates that the location is not generally known. See
Nantucket, 677 F.2d at 99 (internal quotations omitted).
Of course, there are many probative factors to the ques-
IN RE THE NEWBRIDGE CUTLERY COMPANY 11
tion of whether a location is generally known, and these
are just a few examples.
In establishing the goods/place association required
by the second prong of the test, we have explained that
the PTO only needs to show “a reasonable predicate for its
conclusion that the public would be likely to make the
particular goods/place association on which it relies.”
Miracle Tuesday, 695 F.3d at 1344 (quoting In re Pacer
Tech., 338 F.3d 1348, 1351 (Fed. Cir. 2003) (itself quoting
Loew’s, 769 F.2d at 768)) (emphasis in Pacer). It need not
show an “actual” association in consumers’ minds. Id.
(citing Pacer, 338 F.3d at 1351). A goods/place association
can be shown even where the location is not “‘well-
known’” or “‘noted’” for the relevant goods. Cal. Innova-
tions, 329 F.3d at 1338 (quoting Loew’s, 769 F.2d at 767).
If the Trademark Examiner establishes such a prima
facie case, an applicant may rebut this showing with
evidence “that the public would not actually believe the
goods derive from the geographic location identified by
the mark.” In re Save Venice New York, Inc., 259 F.3d
1346, 1354 (Fed. Cir. 2001).
The PTO has long held that where: (1) a location is
generally known; (2) the term’s geographic significance is
its primary significance; and (3) the goods do, in fact,
originate from the named location, a goods/place associa-
tion can be presumed. See, e.g., In re Handler Fenton
Westerns, Inc., 214 U.S.P.Q. 848, 849 (T.T.A.B. 1982);
Board’s Decision at *3 (citing cases); TMEP § 1210.04
(citing cases); see also Nantucket, 677 F.2d at 102 (Nies,
J., concurring) (“[W]e must start with the concept that a
geographic name of a place of business is a descriptive
term when used on the goods of that business. There is a
public goods/place association, in effect, presumed.”
(internal footnote removed)). This presumption may well
be proper, but, as this case can be decided on other
grounds, we do not address its propriety and leave it for
another day.
12 IN RE THE NEWBRIDGE CUTLERY COMPANY
III. The Examiner’s Refusal
The Examiner found that the primary significance of
the word “Newbridge” is a “generally known geographic
place,” i.e., Newbridge, Ireland, and that the goods origi-
nated there. The Examiner then applied the TMEP’s
presumption that a goods/place association existed. The
word “home,” according to the Examiner, was “generic or
highly descriptive” and, therefore, did not affect the
geographic significance of the term. Accordingly, the
Examiner rejected the mark under § 1052(e)(2).
There is no dispute that applicant’s goods are made in
Newbridge, Ireland. Additionally, applicant does not
contend that the presence of the term “home” in the mark
affects whether the mark is primarily geographically
descriptive. Accordingly, the question before us is wheth-
er “Newbridge” is primarily geographically descriptive
when used on or in connection with applicant’s goods.
A. Primary Significance of NEWBRIDGE
The Board concluded that Newbridge, Ireland, is a
place known generally to the public because it is (1) the
second largest town in County Kildare and the seven-
teenth largest in the Republic of Ireland; (2) it is listed in
the Columbia Gazetteer of the World; and (3) it appears on
a number of websites including Wikipedia and tourism
websites that advertise the location as “a large commer-
cial town” with a “silverware visitor centre” in addition to
museums, gardens, historical and battle sites, and a
famous horse racing track. Board’s Decision at *3.
Applicant argues that the relevant purchasing public
would not be aware of the sources cited by the Board.
Applicant also claims that Newbridge, Ireland, is not
generally known to the relevant public as the name of a
place based on the fact that the word “newbridge” has
other, non-geographic meanings that would be more
significant to an American consumer and that there are
IN RE THE NEWBRIDGE CUTLERY COMPANY 13
“several geographic locations called ‘Newbridge.’” Appli-
cant also claims that Newbridge, Ireland, “is not found in
commonly available political maps of Ireland on the
internet” and that the PTO has registered other marks
with the term “Newbridge.” The PTO responds that
Newbridge is a town in Ireland from which applicant
takes its name and from which applicant’s products
actually originate. According to the PTO, this (1) distin-
guishes applicant’s situation from those in which others
have registered the mark and (2) indicates the mark’s
geographic significance irrespective of what other mean-
ings and connotations the mark might have in the ab-
stract. Finally, at oral argument, the solicitor implied
that in this day and age, where the average American
consumer has instant internet access, a location is gener-
ally known if the existence of the location can be reasona-
bly found on the internet. See Oral Argument at 25:05–
28:20, Newbridge, 2013-1535 (Fed. Cir. July 10, 2014),
available at http://oralarguments.cafc.uscourts.gov/
default.aspx?fl=2013-1535.mp3.
The conclusion that Newbridge, Ireland, a town of less
than twenty thousand people, is a place known generally
to the relevant American public is not supported by
substantial evidence. That Newbridge is the second
largest town in County Kildare and the seventeenth
largest in the Republic of Ireland reveals nothing about
what the relevant American purchaser might perceive the
word “Newbridge” to mean and is too insignificant to
show that Newbridge is a place known generally to the
American purchasing public. Similarly, while the Board
relied on the Columbia Gazetteer of the World listing,
what is missing is any evidence to show the extent to
which the relevant American consumer would be familiar
with the locations listed in this gazetteer.
Likewise, the fact that Newbridge, Ireland, is men-
tioned on some internet websites does not show that it is
a generally known location. The internet (and websites
14 IN RE THE NEWBRIDGE CUTLERY COMPANY
such as Wikipedia) contains enormous amounts of infor-
mation: some of it is generally known, and some of it is
not. Cf. In re Bavaria St. Pauli Brauerie AG, 222
U.S.P.Q. 926, 928 (T.T.A.B. 1984) (“there are dozens of
other place names on the same page of the gazetteer that
are likewise devoid of significance as places which any
substantial quantity of American purchasers would
associate with any particular products”). There is simply
no evidence that the relevant American consumer would
have any meaningful knowledge of all of the locations
mentioned in the websites cited by the PTO.
Further, it is simply untenable that any information
available on the internet should be considered known to
the relevant public. The fact that potential purchasers
have enormous amounts of information instantly availa-
ble through the internet does not evidence the extent to
which consumers of certain goods or services in the Unit-
ed States might use this information to discern the pri-
mary significance of any particular term. Neither is a
place necessarily “generally known” just because a pur-
chaser is informed that the name of the mark is the name
of the place. In Vittel, we approvingly cited a Board
decision that allowed registration of the mark AYINGER
BIER for beer, even though the mark was present on the
label and “in picture and words, show[ed] the brewery to
be located in Aying.” Vittel, 824 F.2d at 960 (citing In re
Brauerei Aying Franz Inselkammer Kg, 217 U.S.P.Q. 73
(T.T.A.B. 1983)). Of course, a potential purchaser of this
beer would, seeing the label, learn of the existence of
Aying (and learn that this was the origin of the beer).
Nevertheless, Aying, Germany, was considered obscure
for the purposes of § 1052(e)(2).
To be clear, we do not foreclose the PTO from using
gazetteer entries or internet websites to identify whether
a location is generally known. See In re Bayer Aktieng-
esellschaft, 488 F.3d 960, 969 (Fed. Cir. 2007). For exam-
ple, we have credited gazetteer entries as part of the
IN RE THE NEWBRIDGE CUTLERY COMPANY 15
evidence used to establish that Durango, Mexico, was
generally known. See Loew’s, 769 F.2d at 766 n.3. But
the gazetteer showing was just one piece of evidence that
together with other evidence was sufficient to establish a
prima facie case that Durango is known generally to the
relevant public. See id. at 768. Gazetteer entries and
internet websites are valuable for the information they
provide. But the mere entry in a gazetteer or the fact that
a location is described on the internet does not necessarily
evidence that a place is known generally to the relevant
public. See Vittel, 824 F.2d at 959 (“In dealing with all of
these questions of the public’s response to word symbols,
we are dealing with the supposed reactions of a segment
of the American public, in this case the mill-run of cos-
metics purchasers, not with the unusually well-travelled,
the aficionados of European watering places, or with
computer operators checking out the meaning of strange
words on NEXIS.”).
We have also considered the PTO’s evidence in toto
and find that it likewise is not substantial evidence for
the proposition that, to the relevant public, Newbridge,
Ireland, is generally known. That Newbridge, Ireland, is
not generally known is supported by the fact that certain
maps and atlases do not include it. That “Newbridge” has
other meanings, both geographical and non-geographical,
also makes it less likely that Newbridge, Ireland, is
generally known as the name of a place. On the other
hand, the fact that the PTO has registered “newbridge” in
contexts where the goods did not originate from New-
bridge is not particularly probative since the PTO may
have found no goods/place association in those contexts
and, in any event, “decisions regarding other registrations
do not bind either the agency or this court.” In re Boule-
vard Entm’t, Inc., 334 F.3d 1336, 1343 (Fed. Cir. 2003)
(citing In re Nett Designs, 236 F.3d 1339, 1342 (Fed. Cir.
2001).
16 IN RE THE NEWBRIDGE CUTLERY COMPANY
In sum, the facts here are similar to those of the
Board’s decision in Bavaria, which we cited approvingly
in Vittel, which held that Jever, West Germany, a town of
10,342, was not generally known, despite being mentioned
in a geographical index. Vittel, 824 F.2d at 960 (citing
Bavaria, 222 U.S.P.Q. 926). Here, as in Bavaria, the
evidence as a whole suggests that Newbridge, Ireland, is
not generally known. Thus, to the relevant public the
mark NEWBRIDGE is not primarily geographically
descriptive of the goods, which is what matters. See, e.g.,
Nantucket, 677 F.2d at 100 n.8 (“public association is
determinative of arbitrariness”). Prong one of the test for
primarily geographically descriptive marks is therefore
not met. Accordingly, we need not and do not separately
consider whether a goods/place association exists.
CONCLUSION
For the foregoing reasons, we reverse the Board’s re-
fusal to register applicant’s mark under § 1052(e)(2) and
remand for further proceedings consistent with this
opinion.
REVERSED AND REMANDED