In Re The Newbridge Cutlery Company

Docket No. 2013-1535

January 15, 2015

Brief Summary: Appeal of PTO decision that the use of “Newbridge” in a trademark registration would be geographically distinctive reversed as there was no “evidence to show the extent to which the relevant American consumer would be familiar with the locations”.

Summary: Newbridge (“NCC”) appealed PTO refusal to register the mark NEWBRIDGE HOME as being primarily geographically descriptive. Newbridge is an Irish company located in Newbridge, IE that designs, manufactures and sells housewares, silverware and the like in the US and elsewhere. NCC filed International Registration No. 1068849 through the IP of WIPO; the USPTO examines international registrations for compliance with US law (15 USC § 1141 (2012)). During examination, NCC disclaimed the word “HOME” apart from the mark as a whole in the application. The TM examiner refused the application, and the Board affirmed, on the grounds that “Newbridge, Ireland, is a generally known geographic place and the relevant American public would make an association between applicant’s goods and Newbridge, Ireland.” The opinion includes an extensive review of the history of the refusal to register geographical names in certain situations. The FC disagreed with the PTO, finding “[t]he conclusion that Newbridge…is a place known generally to the relevant American public is not supported by substantial evidence” (“what is missing is any evidence to show the extent to which the relevant American consumer would be familiar with the locations” and “the fact that Newbridge, Ireland, is mentioned on some internet websites does not show that it is a generally known location…it is simply untenable that any information available on the internet should be considered known to the relevant public.”) Thus, “[p]rong one of the test for primarily geographically descriptive marks is…not met” and the Board decision was reversed.

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