In Re A. ZETA S.R.L.

  • Jun 10 2022
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  • Category: CAFC Updates

Zeta filed an application to register PARMA COFFEE for, among other things, coffee and coffee substitutes. The examining attorney refused registration finding that the proposed mark was primarily geographically descriptive of Parma, Italy. In response, Zeta confirmed that the goods in question are being developed in Parma, Italy, but argued that its mark was not primarily geographically descriptive because third parties held existing U.S. trademark registrations for PARMA in connection with various goods and services. The examining attorney entered a final refusal, and on appeal, the Board affirmed. In this non-precedential opinion, after noting that a mark is primarily geographically descriptive if (1) the mark sought to be registered is the name of a place known generally to the public, (2) the source of the goods is the geographic region named in the mark, and (3) the public would make a goods/place association, i.e., believe that the goods for which the mark is sought to be registered originate in that place, the CAFC finds that the record contains substantial evidence supporting the Board’s conclusion that each of these requirements is met. On appeal, Zeta argues that its goods do not originate in Parma, contending that coffee, tea, and cocoa do not grow in Italy (and are known by the public not to be grown in Italy), so the goods to be sold do not “originate” in Parma. However, while the CAFC might consider a position not raised before the Board in exceptional circumstances, Zeta identifies no such circumstances or even any explanation for its failure to present this argument to the Board, and notes that because the record lacks any evidence to support this argument, mere attorney argument cannot suffice. The CAFC also finds that the Board’s conclusion that Zeta’s mark was primarily geographically descriptive is not undermined by Zeta’s laundry list of existing U.S. trademark registrations including Parma and other cities because each registration concerns a mark used in a different context. Accordingly, the CAFC affirms.

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