JPK Paris 75: A Geographically Deceptive Mark
Last week the Federal Circuit upheld a decision from the Trademark Trial and Appeal Board refusing to register the mark “JPK Paris 75” for handbags and other goods because it violates the Lanham Act by being geographically deceptive. The Lanham Act specifically states that a mark may not be registered if the mark “when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them.” This means that the mark is barred from registration because if the significance of the mark is a geographic location, consumers are likely to believe the location on the mark indicates where the good was made, even if it was made elsewhere, and the misrepresentation may be a material factor of a consumer’s purchasing decision.
Jean-Pierre Klifa, a manager and designer at Miracle Tuesday, is where the JPK part of the mark is derived from. Mr. Klifa is a French citizen who lived in Paris for twenty-two years before moving to the United States in 1986. It is well known that Paris is famous for fashion, including the types of goods identified in the trademark application. It should also be noted that the Federal Circuit has concluded that a product could originate from a location even if it was not manufactured there, and may only require a company’s headquarters be located there. The Federal Circuit held that it was reasonable to believe there was an association between the goods and Paris, which would lead consumers to infer a relationship between the mark and the location. The Court went on to state that while Mr. Klifa still considers himself Parisian, there is currently no association between Paris and the goods; Miracle Tuesday is located in Miami and the actual goods are manufactured in Asia.
Miracle Tuesday tried to argue that the Court adopted too narrow of a definition of ‘originates’; that consumers are more concerned with the designers’ origin—Mr. Klifa—than the origin of the goods themselves. They even cite the fact that when celebrities walk down the red carpet people ask, “Who are you wearing?” and not, “Where was it made?” The Court dismissed this argument by stating that consumers’ considerations are not what is relevant, but what the statute says, which is that the relationship of the goods to the location is what is important. Accordingly, Mr. Klifa’s personal association with Paris has no bearing on goods, which appear to be marketed as originating from there.
Additionally, Miracle Tuesday tried to relate the case to Les Halles de Paris, stating that a heightened standard must be shown to find a false association between a service and geographic location. However, the Court dismissed this idea by asserting that Les Halles de Paris involved a mark for restaurant services, whereas this case deals with a mark to identify goods. Due to the inference between the mark and the location, the Court refused to register the mark, as it would mislead consumers into believing the goods originated in Paris, when in fact they did not. It should be noted that Miracle Tuesday has disclaimed the exclusive right to use “Paris.”
While the Court properly applied the law as written, I wonder if Miracle Tuesday’s point about the designer being the important purchasing factor is more important? If consumers truly care more about who the designer is, as opposed to the exact geographic location where the good was manufactured, should we allow the origination to be where the designer lives? Should we change what it means for a good to originate from a location, at least in regards to the fashion industry? In this case, however, I would have to agree with the Court, as Mr. Klifa has not lived in Paris since 1986.