Practice Management

Trademarks: Drink like a Russian.

By Dan Hull

The right to know what befuddles you. The U.S. Court of Appeals for the Federal Circuit clarified the ?materiality? prong of 15 U.S.C. § 1052(e)(3), a new subsection added to trademark statutory law by the NAFTA Implementation Act of 1993, which prohibits ?geographically deceptively misdescriptive? trademarks (and service marks). In re: Spirits International, N.V., 2008-1369 (April 29, 2009) involved an application for Moskovskaya, which translates from Russian to English as ?of or from Moscow,? as a mark for non-Russian vodka. Because the Trademark and Trial Appeal Board didn?t apply the proper test--whether those capable of translating the term represented a ?substantial portion of the intended audience?--the case was sent back to see if that proper subset of consumers would mistakenly assume the vodka was Russian and, for that reason, choose to purchase it.

Note: Never-confused Rob Bodine is a DC-based IP lawyer, world traveler, and philosopher. Rob recently became of counsel to Hull McGuire. He will be a frequent contributor to WAC? on issues of trade and service marks, IP licensing and, apparently, Vodka globally.

Full post as published by What About Clients? on May 18, 2009 (boomark / email).