On February 10, 2016 Scott Slavick's article, "Ce what, monsieur? Application for French phrase invites wrinkles in trademark law" was published in InsideCounsel.
Luxembourg Company Overcomes Trademark Refusal Aux États-Unis
Primarily geographically deceptively misdescriptive. It's hard to say, and even harder to overcome when your trademark application has been so deemed by the USPTO.
Yet in In re Luvanis S.A., the TTAB recently went against past precedent and reversed a refusal to register the mark Aux Etats Unis for luggage. It found that the French phrase refers to a generally known geographical place—the United States—and that the applicant's goods would not originate there, two factors supporting upholding the refusal. But the Board also held that the USPTO examiner had failed to prove that a substantial portion of the relevant consuming public would likely be deceived by the place name, and thus reversed the refusal.
In his latest article for InsideCounsel.com, Brinks' Scott Slavick notes that overcoming a primarily geographically deceptively misdescriptive refusal is still unlikely, in spite of the TTAB's determination in In re Luvanis S.A. He adds that because each case is considered on its own specific facts, the applicability of the decision is likely limited.
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