In Re Miracle Tuesday, LLC

United States Court of Appeals
for the Federal Circuit
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IN RE MIRACLE TUESDAY, LLC
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2011-1373
(Serial No. 77/649,391)
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Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board.
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Decided: October 4, 2012
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PAUL D. SUPNIK, of Beverly Hills, California, argued
for appellant.
CHRISTINA J. HIEBER, Associate Solicitor, United
States Patent and Trademark Office, of Alexandria,
Virginia, argued for appellee. With her on the brief were
RAYMOND T. CHEN, Solicitor, and ROBERT J. MCMANUS,
Associate Solicitor. Of counsel was THOMAS V. SHAW.
__________________________
Before RADER, Chief Judge, LINN and O’MALLEY, Circuit
Judges.
O’MALLEY, Circuit Judge.
Miracle Tuesday LLC (“Miracle Tuesday”) appeals
from a decision of the Trademark Trial and Appeal Board
IN RE MIRACLE 2
(“the Board”) which affirmed the trademark examining
attorney’s refusal to register the mark JPK PARIS 75 and
design on grounds that it is primarily geographically
deceptively misdescriptive under Section 2(e)(3) of the
Lanham Act, 15 U.S.C. § 1052(e)(3). In re Miracle Tues-
day, LLC, No. 77649391, 2011 TTAB LEXIS 32 (TTAB
Feb. 3, 2011) (“Board Decision”). Because we find that the
Board’s refusal to register the mark was based on sub-
stantial evidence, we affirm.
BACKGROUND
On January 14, 2009, Miracle Tuesday filed an intent-
to-use application with the United States Patent and
Trademark Office (“PTO”) seeking to register the mark
JPK PARIS 75 and design, shown below, in connection
with sunglasses, wallets, handbags and purses, travel
bags, suitcases, belts, and shoes 1 :
The letters “JPK” are the initials of Jean-Pierre Klifa,
who is the manager of Miracle Tuesday and designer of
the goods at issue.
1 Miracle Tuesday disclaimed the exclusive right to
use “Paris.”
3 IN RE MIRACLE
In support of its registration application, Miracle
Tuesday submitted four articles discussing consumer
purchasing decisions and a declaration from Mr. Klifa.
The declaration explained that Mr. Klifa is a French
citizen who lived in Paris for approximately twenty-two
years until 1986, and currently resides in the United
States. Although Mr. Klifa indicated in his declaration
that he exhibited at two trade shows while in Paris, he
did not identify which goods he exhibited at those shows.
On July 23, 2009, the examining attorney issued a fi-
nal decision refusing to register the mark on grounds that
it was “primarily geographically deceptively misdescrip-
tive” in relation to the identified goods. 2 In that decision,
the examiner found that: (1) the primary significance of
the mark is Paris; and (2) Paris is famous for fashion,
including the types of fashion accessories identified in the
application. Turning to the origin of the goods identified,
the examiner found that the only connection between the
goods and Paris is that Mr. Klifa is Parisian. Because
Paris is famous as a source of the goods at issue, the
examiner found that the misrepresentation regarding the
geographic origin of the goods would be a material factor
in a significant portion of the relevant consumers’ decision
to buy the goods.
Miracle Tuesday appealed the examiner’s refusal to
register the mark to the Board and the Board affirmed.
First, the Board pointed to several undisputed facts,
including that: (1) Paris is a well-known city in France
and is a center of design and fashion; (2) Miracle Tuesday
is a Nevada limited liability company with its primary
2 The phrase “primarily geographically deceptively
misdescriptive” is a statutory term of art in the trade-
mark context; we neither take responsibility for nor
endorse the split infinitives or absence of necessary com-
mas its use in this opinion requires.
IN RE MIRACLE 4
place of business in Miami, Florida; (3) Mr. Klifa once
lived in Paris but now resides in the United States, and
has done so for some time; and (4) Mr. Klifa designs
handbags.
Turning to the primary significance of the mark, the
Board rejected Miracle Tuesday’s argument that the
monogram “JPK” is the dominant portion of the mark.
Instead, the Board found that the designation “Paris” in
the mark “serves to identify the geographic origin of the
products” such that “consumers seeing applicant’s prod-
ucts bearing applicant’s mark will assume that such
products have a connection with Paris either in their
manufacture or their design.” Board Decision, 2011
TTAB LEXIS 32, at *5. The Board also rejected Miracle
Tuesday’s argument that there is a connection between
the goods identified in the application and Paris solely
because Mr. Klifa once lived and worked there. Finally,
the Board found the evidence sufficient to show that a
substantial portion of relevant consumers would be de-
ceived into believing that the goods came from Paris.
Accordingly, the Board found that the mark JPK PARIS
75 and design is primarily geographically deceptively
misdescriptive as applied to Miracle Tuesday’s goods.
Miracle Tuesday timely appealed to this court. We
have jurisdiction under 28 U.S.C. § 1295(a)(4)(B).
DISCUSSION
Under Section 2(e)(3) of the Lanham Act, a mark may
not be registered on the principal register if the mark,
“when used on or in connection with the goods of the
applicant is primarily geographically deceptively misde-
scriptive of them.” 15 U.S.C. § 1052(e)(3). A mark is
primarily geographically deceptively misdescriptive, and
thus barred from registration, if: (1) “the primary signifi-
cance of the mark is a generally known geographic loca-
5 IN RE MIRACLE
tion”; (2) “the consuming public is likely to believe the
place identified by the mark indicates the origin of the
goods bearing the mark, when in fact the goods do not
come from that place”; and (3) “the misrepresentation was
a material factor in the consumer’s decision” to purchase
the goods. In re Cal. Innovations, Inc., 329 F.3d 1334,
1341 (Fed. Cir. 2003).
Whether a mark is primarily geographically decep-
tively misdescriptive is a question of fact. In re Save
Venice N.Y., Inc., 259 F.3d 1346, 1351 (Fed. Cir. 2001).
We review the Board’s factual findings for substantial
evidence. In re Pacer Tech., 338 F.3d 1348, 1349 (Fed.
Cir. 2003) (citation omitted). Substantial evidence is
defined as “more than a mere scintilla” and “such relevant
evidence as a reasonable mind would accept as adequate
to support a conclusion.” Id. (citation and internal quota-
tion marks omitted).
On appeal, Miracle Tuesday does not challenge the
Board’s finding that the primary significance of the mark
is Paris; it focuses its arguments on the second and third
elements of the Board’s Section 2(e)(3) refusal. Specifi-
cally, Miracle Tuesday argues that the Board erred when
it: (1) found that the goods identified do not originate in
Paris even though the designer of the goods has signifi-
cant ties to Paris; (2) applied the wrong standard in
concluding that the use of the word Paris in the mark is
deceptive; and (3) failed to consider certain material
evidence in reaching its decision. For the reasons ex-
plained below, each of these arguments lacks merit.
A. Association & Origin
Because Miracle Tuesday does not challenge the
Board’s determination as to the first element of a Section
2(e)(3) refusal, we turn directly to the second element
which asks “whether the public would reasonably identify
IN RE MIRACLE 6
or associate the goods sold under the mark with the
geographic location contained in the mark.” Save Venice
N.Y., 259 F.3d at 1353-54. This element involves two
questions: (1) whether there is an association between the
goods and the place identified (“a goods/place associa-
tion”); and (2) whether the applicant’s goods in fact come
from that place. See Cal. Innovations, 329 F.3d at 1341(the PTO must ask whether “the consuming public is
likely to believe the place identified by the mark indicates
the origin of the goods bearing the mark, when in fact the
goods do not come from that place”).
As to the first inquiry, the examiner has the initial
burden of submitting evidence to establish a goods/place
association and the burden then shifts to the applicant to
rebut this showing with evidence “that the public would
not actually believe the goods derive from the geographic
location identified by the mark.” Save Venice N.Y., 259
F.3d at 1354. This court has explained that the PTO is
not required to establish an “actual goods/place associa-
tion.” Pacer Tech., 338 F.3d at 1351 (emphasis added).
Instead, the PTO need only “establish ‘a reasonable
predicate for its conclusion that the public would be likely
to make the particular goods/place association on which it
relies.’” Id. (emphasis in original) (quoting In re Loew’s
Theatres, Inc., 769 F.2d 764, 768 (Fed. Cir. 1985)).3
Where, as here, a case involves goods rather than ser-
vices, we have held that “the goods-place association often
requires little more than a showing that the consumer
identifies the place as a known source of the product.” In
3 Although Loew’s Theatres was decided before the
Lanham Act was amended to incorporate relevant provi-
sions of the North American Free Trade Agreement
(“NAFTA”), this court, in Pacer Technology, indicated that
“the reasoning and holding in Loew’s remains unchanged
by NAFTA.” Pacer Tech., 338 F.3d at 1351 n.1.
7 IN RE MIRACLE
re Les Halles de Paris J.V., 334 F.3d 1371, 1374 (Fed. Cir.
2003) (citations omitted). Therefore, to establish a
goods/place association, “the case law permits an infer-
ence that the consumer associates the product with the
geographic location in the mark because that place is
known for producing the product.” Id. (citation omitted).
It is undisputed that Paris is famous for fashion and
fashion accessories, including the types of goods identified
in the application. Because relevant purchasers are likely
to think of Paris as a known source for fashion accesso-
ries, we agree with the Board that there is sufficient
evidence of a goods/place association between Paris and
the goods listed.
The second inquiry under this element asks whether
the goods will in fact originate from the named place. It is
undisputed that goods may be deemed to originate in a
geographic location if they are manufactured there.
Origin can be predicated on factors other than manufac-
ture, however, where the circumstances justify such a
connection. See Corporacion Habanos S.A. v. Anncas Inc.,
88 U.S.P.Q.2d 1785, 1791 (TTAB 2008) (“[A] product may
be found to originate from a place, even though the prod-
uct is manufactured elsewhere.”). Indeed, at oral argu-
ment, the PTO conceded that, in appropriate
circumstances, “the place of design can be enough.” See
Oral Argument at 17:58, available at http://www.
cafc.uscourts.gov/oral-argument-recordings/2011-1373/all.
Similarly, if the goods contain a main component or
ingredient from the place identified in the mark, that
connection can be sufficient to find that the goods origi-
nate from that place. See Corporacion Habanos, 88
U.S.P.Q.2d at 1791 (“[A] product might be found to origi-
nate from a place where the main component or ingredi-
ent was made in that place.” (citation omitted)); see also
Loew’s Theatres, 769 F.2d at 768 (evidence that tobacco is
IN RE MIRACLE 8
“one in a short list of principal crops” in Durango, Mexico
was sufficient to show that the public would likely believe
that chewing tobacco under the mark DURANGO origi-
nated there). And, a product might be found to originate
from a place where the applicant has its headquarters or
research and development facilities, even when the manu-
facturing facilities are elsewhere. See In re Nantucket
Allserve, Inc., 28 U.S.P.Q.2d 1144, 1145-46 (TTAB 1993)
(identifying Nantucket as the principal origin of appli-
cant’s products, even though the goods were manufac-
tured elsewhere, because the company had its
headquarters and research and development center on
Nantucket).
Here, the Board found that Miracle Tuesday is located
in Miami, its designer is not located in Paris, and the
goods at issue are designed and produced somewhere
other than Paris. The Board rejected Miracle Tuesday’s
argument that the fact that Mr. Klifa lived and worked in
Paris for twenty-two years is sufficient to justify the
conclusion that the products originated in Paris. The
Board concluded that, “[a]lthough Mr. Klifa may still
consider himself to be Parisian, the goods that applicant
seeks to register are not because there is no current
connection between the goods and Paris.” Board Decision,
2011 TTAB LEXIS 32, at *7.
On appeal, Miracle Tuesday argues that the Board
took an overly restrictive view of the word “originates.”
Specifically, it argues that its designer – Mr. Klifa – has a
significant connection with Paris and that customers are
more interested in the designer’s origin than the origin of
the goods themselves. In support of this position, Miracle
Tuesday references red carpet events where interviewers
ask celebrities “who are you wearing?” rather than “where
was it made?”
9 IN RE MIRACLE
Regardless of whether today’s consumers consider and
care about the origin of the designer of the goods they
purchase, the relevant inquiry under the statute is
whether there is a connection between the goods and
Paris – not between the designer and Paris. See 15 U.S.C.
§ 1052(e)(3) (a mark is not registrable if, “when used on or
in connection with the goods of the applicant is primarily
geographically deceptively misdescriptive of them”) (em-
phasis added). Accordingly, the fact that Mr. Klifa lived
in Paris over twenty-five years ago is insufficient to
establish that the goods to now be marketed under the
proposed mark originate there. On this record, there is no
evidence that Mr. Klifa’s activities while he lived in Paris
had anything to do with designing handbags or the other
goods identified in the application. Nor is there any
evidence that Mr. Klifa exhibited any of the types of goods
at issue at the Parisian trade shows he attended. Given
the statutory focus on the geographic origin of the goods,
Miracle Tuesday’s attempts to shift the inquiry to the
historical origin of the designer must fail.
Although there is support for the proposition that
goods need not be manufactured in the named place to
originate there – and we do not endorse application of a
contrary rule here – it is clear that there must be some
other direct connection between the goods and the place
identified in the mark (e.g., the place identified is where
the goods are designed or distributed, where the applicant
is headquartered or has its research and development
facility, or where a main component of the good origi-
nates). Here, Miracle Tuesday concedes that the goods
identified in the application do not originate in Paris.
Indeed, at oral argument, counsel for Miracle Tuesday
revealed that the goods at issue “are made outside the
United States, in Asia.” See Oral Argument at 3:03. The
record further reveals that the goods identified are de-
IN RE MIRACLE 10
signed in Miami, and there is no evidence that a main
component of the goods, or even any component of the
goods, comes from Paris. Simply put, there is no evidence
of a current connection between the goods and Paris.
Given that Paris is a world-renowned fashion center
and is well-known as a place where fashion goods and
accessories are designed, manufactured, and sold, we
agree with the Board that “the relevant public would
likely believe that [Miracle Tuesday’s] products offered
under the mark JPK PARIS 75 and design come from
Paris (i.e., that a goods/place association exists) when in
fact the goods will not come from that place.” Board
Decision, 2011 TTAB LEXIS 32, at *8. 4 And, because
there is no evidence showing a direct connection between
Miracle Tuesday’s goods and Paris, the Board properly
found that there is insufficient evidence that the goods
originate in Paris.
B. Materiality
The third and final element of a Section 2(e)(3) refusal
focuses on materiality and asks “whether a substantial
portion of the relevant consumers is likely to be deceived”
by the mark’s misrepresentation of a goods/place associa-
tion. In re Spirits Int’l, N.V., 563 F.3d 1347, 1353 (Fed.
Cir. 2009). In Spirits International, we held that, “to
establish a prima facie case of materiality there must be
some indication that a substantial portion of the relevant
consumers would be materially influenced in the decision
to purchase the product or service by the geographic
meaning of the mark.” Id. at 1357. We have also held
that “the PTO may raise an inference in favor of material-
4 The record does not disclose the significance of the
number “75” in the proposed mark. Neither party argues
that its presence is meaningful to the Board’s Section
2(e)(3) rejection.
11 IN RE MIRACLE
ity with evidence that the place is famous as a source of
the goods at issue.” Les Halles de Paris, 334 F.3d at
1374. 5
Applying these standards, the Board stated that:
Because we have determined that the primary
significance of Paris to the relevant public is the
geographic place, and in view of the renown and
reputation of fashion designs originating in Paris,
we may infer that at least a substantial portion of
consumers who encounter applicant’s mark fea-
turing the word “Paris” on applicant’s products
are likely to be deceived into believing that those
products come from or were designed in Paris.
Board Decision, 2011 TTAB LEXIS 32, at *9. Accord-
ingly, the Board found that the materiality factor was
satisfied.
On appeal, Miracle Tuesday argues that the Board
applied the wrong standard for materiality and that it
was required to find that the use of the word Paris “does
in fact deceive the public.” Appellant’s Br. 14. According
to Miracle Tuesday, because there is a substantial connec-
tion between Mr. Klifa and Paris, the reference to Paris in
the mark is a true statement that is not deceptive. Mira-
cle Tuesday’s arguments are without merit.
First, Miracle Tuesday points to our decision in Les
Halles de Paris as evidence that the PTO “must show
some heightened standard to show a false association
between the services and the relevant geographic loca-
5 Although Les Halles de Paris was decided before
this court clarified the materiality standard in Spirits
International, nothing in Spirits International suggests
that there must be actual evidence of deception rather
than an inference of materiality drawn from the evidence.
IN RE MIRACLE 12
tion.” Appellant’s Reply 6. Miracle Tuesday’s argument
is fundamentally flawed, however, given that this case
involves a mark to identify goods whereas Les Halles de
Paris involved an application to register a mark for res-
taurant services. Indeed, in Les Halles de Paris, we
specifically recognized that: (1) “the standard under
section 2(e)(3) is more difficult to satisfy for service marks
than for marks on goods”; and (2) “geographic marks in
connection with services are less likely to mislead the
public than geographic marks on goods.” Les Halles de
Paris, 334 F.3d at 1374. 6 Given these differences, we
drew a distinction between the evidence necessary to give
rise to an inference of materiality for goods and that
necessary to give rise to that same inference for services.
Although for goods, evidence that a place is famous as a
source of those goods is sufficient to raise an inference of
materiality, when dealing with service marks, we held
that there must be a heightened association between the
services and geographic location. See id. at 1374-75 (“In
other words, an inference of materiality arises in the
event of a very strong services-place association. Without
a particularly strong services-place association, an infer-
ence would not arise, leaving the PTO to seek direct
evidence of materiality.”). Because this case involves
goods – rather than services – Miracle Tuesday’s reliance
6 In Les Halles de Paris, we explained that a “cus-
tomer typically receives services, particularly in the
restaurant business, at the location of the business.” 334
F.3d at 1373. “Having chosen to come to that place for the
services, the customer is well aware of the geographic
location of the service. This choice necessarily implies
that the customer is less likely to associate the services
with the geographic location invoked by the mark rather
than the geographic location of the service, such as a
restaurant.” Id.13 IN RE MIRACLE
on the portion of Les Halles de Paris creating a height-
ened standard for service marks is misplaced. 7
As the Board correctly noted, the fact that Paris is
famous for fashion and design gives rise to an inference
that a substantial portion of relevant customers would be
deceived into thinking the goods identified came from
Paris. Miracle Tuesday points to no evidence that would
rebut this inference. Instead, as noted above, Miracle
Tuesday maintains that customers care more about the
origin of the designer than the origin of the goods and
seems to argue that, where the mark involves a fashion
designer, it should be treated as a service mark, with an
attendant heightened level of materiality required. See
Appellant’s Br. 16 (“The relationship of the designer to
Paris [is] not so far from a service performed by the
designer, much as a restaurant service where a height-
ened materiality test is required.”). Miracle Tuesday cites
no authority for this proposition and ignores the fact that
its application for registration is directed to goods, not
services. Because our analysis must focus on the informa-
tion provided in the application, Mr. Klifa’s early years in
7 Miracle Tuesday also argues that “the effect of
NAFTA was to impose a heightened materiality test” such
that “a mark may only be rejected if there is true fraud or
deceptiveness in the mark.” Appellant’s Br. 12. Although
Miracle Tuesday is correct that the materiality prong of
the Section 2(e)(3) inquiry was added after NAFTA,
nothing contained therein or in our subsequent case law
suggests that there must be actual evidence of deception
rather than an inference from the evidence. Indeed, this
court’s decision in California Innovations, which recog-
nized that NAFTA amended the Lanham Act to add a
materiality inquiry, predates our decision in Les Halles de
Paris where we said that the PTO can raise an inference
of materiality with evidence that the place identified in
the mark is famous as a source of the goods at issue. Les
Halles de Paris, 334 F.3d at 1374.
IN RE MIRACLE 14
Paris are effectively irrelevant, and certainly insufficient
to overcome a proper inference of materiality.
For all of these reasons, we agree with the Board that
the geographic misrepresentation in the mark is material
and would deceive a substantial portion of the relevant
consumers regarding the source of the goods outlined in
the application.
C. Evidentiary Issue
Finally, Miracle Tuesday argues the Board failed to
consider certain scholarly articles it submitted regarding
consumer purchasing decisions and “country of origin”
issues. Because the Board did not specifically refer to the
articles in its decision, Miracle Tuesday assumes that
they were not considered. According to Miracle Tuesday,
the articles “show that customers are not necessarily
concerned about the country of origin or country of manu-
facture of a product, but other features of the product,
which in this particular instance arguably includes
‘source’ of the designer, or ‘origin’ of the designer . . . .”
Appellant’s Br. 24.
In response, the PTO argues that the articles “are ir-
relevant to the proper statutory inquiry of whether the
goods come from the place named by the mark” and thus
the Board “had no obligation to address them in its deci-
sion.” Appellee’s Br. 15, n.7. The PTO further argues
that the Board fully considered Miracle Tuesday’s theory
that goods need not be manufactured in a place to origi-
nate there. We agree with the PTO on both points.
First, as previously discussed, the relevant inquiry
under the statute focuses on the origin of the goods – not
the origin of the designer. Second, the mere fact that the
Board did not recite all of the evidence it considered does
not mean the evidence was not, in fact, reviewed. See
15 IN RE MIRACLE
Plant Genetic Sys., N.V. v. Dekalb Genetics Corp., 315
F.3d 1335, 1343 (Fed. Cir. 2003) (“We presume that a fact
finder reviews all the evidence presented unless he explic-
itly expresses otherwise.”) (citation and internal quotation
marks omitted). And, as the PTO argues, it is clear that
the Board fully considered Miracle Tuesday’s theory of the
word “originate.” See Board Decision, 2011 TTAB LEXIS
32, at *6-7 (considering and rejecting the argument that,
“because the creative force behind applicant’s products
lived and worked in Paris for 23 years, the Board should
consider the design of applicant’s products as having
originated in Paris”). Accordingly, we find that Miracle
Tuesday’s evidentiary challenge lacks merit.
CONCLUSION
For the foregoing reasons, and because we find that
Miracle Tuesday’s remaining arguments are without
merit, we affirm the Board’s refusal to register the mark
JPK PARIS 75 and design under Section 2(e)(3).
AFFIRMED