In Re California Innovations, Inc., Fed.Cir. opinion 02-1407

California Innovations was a Canadian company who applied for a trademark for their name and were turned down by the USPTO.  The court cited 15 U.S.C. 2(e)(3) of the Lanham Act and claimed that the name was primarily geographically deceptively misdescriptive.  Before the North American Free Trade Agreement, the PTO put primarily geographically descriptive or deceptively misdescriptive marks on the supplemental register until there was a showing of acquired distinctiveness, then they could go on the principal register.  After NAFTA a new standard for marks was in play, "if the place [in the mark] is noted for the particular goods, a mark for such goods which do not originate there is likely to be deceptive and not registrable under any circumstances."  Loew's Theatres, 769 F.2d at 768, n.6.  Also in House of Windsor, 221 USPQ at 57, the instant court cited this sentence, "if there is evidence that goods like applicant's or goods related to applicant's are a principal product of the geographical area named by the mark, then the deception will most likely be found material and the mark, therefore, deceptive."  From these cases the court derived two elements of a primarily geographically deceptively misdescriptive mark: 1)mark names a geographic location that is known for producing the goods that registrant seeks to trademark 2)the good-place connection made by the mark would materially influence the consumer.  In the end the court adopted a three-prong test, the two prongs already mentioned, and the third prong of "whether the mark is recognizable, at least to some large segment of the public, as the name of a geographical area."  In Re California Innovations, Inc., Fed.Cir. opinion 02-1407 at p.5.  The court then remanded the case and told the USPTO to look at these new post-NAFTA factors.