Federal Circuit Clarifies Materiality Test for Geographic Marks

by Thomas Long, Legal Editor, CCH Trademark Law Guide

The Trademark Trial and Appeal Board applied an incorrect test for materiality in determining that an applicant's mark MOSKOVSKAYA was geographically misdescriptive of the applicant's vodka, the U.S. Court of Appeals for the Federal Circuit has held. Under the doctrine of "foreign equivalents," the mark was translated from Russian to "of or from Moscow." The applicant's vodka was not produced in Moscow or in Russia, and the TTAB had determined that the mistaken belief that the vodka came from Moscow would be a material factor in consumers' decision to purchase the product.

The materiality test of Sec. 2(e)(3) of the Lanham Act requires that a substantial portion of the relevant consumer population is likely to be deceived by the mark, not whether any absolute number or particular segment of the relevant consumers (such as foreign-language speakers) is likely to be deceived. The TTAB based its refusal to register the mark on the fact that Russian was a "common, modern language" spoken by 706,000 people in the United States, according the 2000 census. This analysis failed to consider whether Russian speakers comprised a substantial portion of the intended audience, the court said. The TTAB's decision affirming refusal to register the mark (TRADEMARK LAW GUIDE ¶61,194) was vacated and the case was remanded.

In re Spirits International, N.V., Fed. Cir., ¶61,421.

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