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In re Les Halles De Paris J.V., 334 F.3d 1371, 67 U.S.P.Q.2d 1539

Facts

Les Halles De Paris J.V., a French kosher restaurant in New York City, sought to register the service mark 'LE MARAIS' for its restaurant services. The United States Patent and Trademark Office (PTO) initially refused the registration, claiming the mark was primarily geographically deceptively misdescriptive, associating it with a region in Paris known for its Jewish quarter. The Trademark Trial and Appeal Board affirmed this refusal, citing evidence that patrons might believe the restaurant services were connected to the Parisian area. Les Halles appealed the decision, arguing that the evidence was insufficient to support the Board's conclusion.

Les Halles filed its application to register the service mark LE MARAIS in connection with 'restaurant services' in International Class 42. The application documented use of the mark from as early as June 4, 1995, as the name for Les Halles' restaurant in New York that serves a French kosher cuisine.

Issue

Was the refusal to register the service mark 'LE MARAIS' for restaurant services as primarily geographically deceptively misdescriptive proper?

Was the refusal to register the service mark 'LE MARAIS' for restaurant services as primarily geographically deceptively misdescriptive proper?

Rule

Under section 2(e)(3) of the Lanham Act, a mark is primarily geographically deceptively misdescriptive if (1) the primary significance of the mark is a generally known geographic location, (2) the consuming public is likely to believe the place identified by the mark indicates the origin of the services bearing the mark, and (3) the misrepresentation was a material factor in the consumer's decision.

Under section 2(e)(3) of the Lanham Act, a mark is primarily geographically deceptively misdescriptive if (1) the primary significance of the mark is a generally known geographic location, (2) the consuming public is likely to believe the place identified by the mark indicates the origin of the goods [or services] bearing the mark, when in fact the goods [or services] do not come from that place, and (3) the misrepresentation was a material factor in the consumer's decision.

Analysis

The court analyzed whether the Board's conclusion that 'LE MARAIS' was primarily geographically deceptively misdescriptive was supported by substantial evidence. It noted that the Board failed to demonstrate a services-place association, which is necessary to establish that consumers would be misled into believing the restaurant services originated from the geographic location invoked by the mark. The court emphasized that the evidence did not show that diners in New York would identify the Paris region as a source of the restaurant services or that this association was a material factor in their decision to patronize the restaurant.

The Board's decision, however, does not show a services-place association or the materiality of that association to a patron's decision to patronize Les Halles' restaurant. To be specific, the record does not show that a diner at the restaurant in question in New York City would identify the region in Paris as a source of those restaurant services.

Conclusion

The court vacated the Board's decision and remanded the case for further proceedings, indicating that the proper standard for determining geographic deceptiveness was not applied.

Accordingly, this court vacates the Board's decision and remands for application of the appropriate standard in accordance with this opinion.

Who won?

Les Halles De Paris J.V. prevailed in the appeal against the Trademark Trial and Appeal Board's refusal to register its service mark. The court found that the Board did not adequately demonstrate that the mark 'LE MARAIS' was primarily geographically deceptively misdescriptive. The evidence presented did not support a finding that consumers would associate the restaurant services with the Parisian region, nor did it show that such an association was a material factor in their decision to choose the restaurant. As a result, the court vacated the Board's decision and remanded the case for proper application of the legal standard.

Les Halles De Paris J.V. prevailed in the appeal against the Trademark Trial and Appeal Board's refusal to register its service mark. The court found that the Board did not adequately demonstrate that the mark 'LE MARAIS' was primarily geographically deceptively misdescriptive.

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