In re Nantucket, Inc

Brief Fact Summary. The Patent and Trademark Office (PTO) Appeal Board refused the mark NANTUCKET for men’s shirts on the grounds that it was “primarily geographically deceptively misdescriptive.â€

Synopsis of Rule of Law. A mark may be found geographically deceptively misdescriptive when there is a reasonable basis for believing that purchasers are likely to be deceived.

Facts. Nantucket, Inc. applied to the PTO to register the mark NANTUCKET for its men’s shirts.  Refusal to register was based on the Lanham Act, which provides that a mark is primarily geographical if it is the name of a place which has general renown to the public at large and which is a place where goods and services are known to originate as a result of commercial activity.  The examiner concluded that the mark NANTUCKET was either primarily geographically descriptive or misdescriptive, depending on whether Nantucket’s shirts did or did not come from Nantucket Island.  Since the shirts did not come from there, the examiner held that the mark was primarily geographically deceptively misdescriptive.  Nantucket appealed, claiming that as applied to shirts, NANTUCKET was arbitrary and descriptive as there was no association with Nantucket Island in the public mind of men’s shirts.

Issue. Must a mark be found geographically deceptively misdescriptive when there is a reasonable basis for believing that purchasers are likely to be deceived?

Held. (Markey, C.J.)  Yes.  No evidence exists to demonstrate that the purchasing public would expect men’s shirts to have their origin in Nantucket when seen in the market place with NANTUCKET on them.  Therefore, buyers are not likely to be deceived, and registration cannot be refused on the ground that the mark is “primarily geographically deceptively misdescriptive.â€Â  Reversed.

Discussion. The PTO’s mechanical test for registrability of geographical terms was clarified by this ruling.  If the mark is recognizable to a large segment of the population as the name of a geographical area, the mark must be denied registration under the test.  The court noted that one flaw in the Board’s test was not considering the nature of the applicant’s goods.