1210.05(c)(i) Materiality In Cases Involving Goods
In determining "materiality," the Board has stated that it looks to evidence regarding the probable reaction of purchasers to a particular geographical term when it is applied to particular goods. See In re House of Windsor, Inc., 221 USPQ 53, 56 (TTAB 1983), recon. denied, 223 USPQ 191 (TTAB 1984). Materiality may be established inferentially based on indirect evidence such as gazetteer entries and third-party websites. See Corporacion Habanos, S.A. v. Guantanamera Cigars Co., 102 USPQ2d 1085, 1098 (TTAB 2012). If the evidence shows that the geographical area named in the mark is sufficiently known to lead purchasers to make a goods/place association, but the record does not show that the relevant goods are a principal product of that geographical area, the deception will most likely be found not to be material. If, however, there is evidence that the relevant goods, or related goods, are a principal product of the geographical area named by the mark, then the deception will most likely be found to be material.
Furthermore, evidence that a place is famous as a source of the goods at issue raises an inference in favor of materiality. In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841, 1850 (TTAB 2012); see In re Les Halles De Paris J.V., 334 F.3d 1371, 1374, 67 USPQ2d 1539, 1542 (Fed. Cir. 2003). Such evidence supports a presumption that a substantial portion of the relevant consumers is likely to be deceived.
Thus, to establish the materiality element for goods, the evidence must show that:
- The place named in the mark is famous as a source of the goods at issue;
- The goods in question are a principal product of the place named in the mark; or
- The goods are, or are related to, the traditional products of the place named in the mark, or are an expansion of the traditional products of the place named in the mark.
See Cal. Innovations, 329 F.3d at 1340, 66 USPQ2d at 1857; In re Save Venice N.Y., Inc., 259 F.3d 1346, 1355, 59 USPQ2d 1778, 1784 (Fed. Cir. 2001); Compania de Licores Internacionales, 102 USPQ2d at 1850; House of Windsor, 221 USPQ at 57.
Searches that combine the place name with the name of the goods and terms such as "famous," "renowned," "well-known," "noted for," "principal," or "traditional" may be useful to establish materiality. Compania de Licores Internacionales, 102 USPQ2d at 1850.
Note that in U.S. Playing Card Co. v. Harbro, LLC, 81 USPQ2d 1537, 1542 (TTAB 2006), the Board held that the mark VEGAS was not primarily geographically deceptively misdescriptive of playing cards that do not originate in Las Vegas, finding that the opposer failed to establish that the misleading goods/place association would be a material factor in the customer’s decision to purchase the goods. The Board rejected opposer’s argument that it had met the materiality factor by proving that there is a market for cancelled casino cards from Las Vegas casinos, stating that "[a]lthough the evidence demonstrates that consumers are interested in obtaining cards that were used in casinos, the evidence does not establish that they are interested in purchasing playing cards that were manufactured or used in Las Vegas." The Board also disagreed with opposer’s contention that the goods/place association between Las Vegas and playing cards was so strong that materiality could be presumed.