En route to Paris for the spring conference of the Pharmaceutical Trade Marks Group, I am contemplating trying to pay a visit to the PARIS BEACH CLUB. Paris Beach Club! Get it? It’s a joke because, as everyone of course knows, Paris is land-locked and has no beach.
Or so goes the reasoning of one of my favorite Trademark Trial & Appeal Board cases, In re Sharky’s Dry Goods Co., 23 U.S.P.Q.2d 1061 (1992). This decision is a great find for applicants seeking to register marks containing a geographic reference to a place where their goods do not originate, provided they coined their marks with a sense of humor.
Under Section 2(e)(3) of the Lanham Act, a mark cannot be registered if it is primarily geographically deceptively misdescriptive. A mark is considered geographically deceptively misdescriptive if (1) the primary significance of the mark is a generally known geographic location; (2) the consuming public is likely to believe that the goods originate from the place identified (that is, there is a “goods/place association”) when in fact they do not; and (3) the misrepresentation is material to consumers’ purchasing decision.
But the PARIS BEACH CLUB rule can undercut the goods/place association if consumers will understand that the mark is a joke. In Sharky’s Dry Goods, the applicant sought to register the mark PARIS BEACH CLUB for t-shirts and sweatshirts. The Examining Attorney rejected the application as primarily geographically deceptively misdescriptive, because the garments were not going to originate in Paris. The TTAB, however, overturned the refusal, finding that the Examining Attorney had simply failed to get the joke. As the TTAB explained:
Paris, of course, is not located on an ocean or lake, and does not have a beach. The juxtaposition of Paris with Beach Club results in an incongruous phrase, such that purchasers will view PARIS BEACH CLUB as a humorous mark, with the word ‘Paris’ in the mark being a facetious rather than a geographic reference, a take-off on the fact that the city of Paris is known for haute couture. It is Paris’ connection with high fashion that is intrinsic to the satire, and makes this take-off on the cachet associated therewith work.
Unfortunately for Sharky’s, after it went to the trouble of appealing and winning before the TTAB and its application was published, an opposition was filed by the owner of the PARIS SPORTS CLUB mark for clothing and accessories. At that point, Sharky’s gave up the fight and defaulted, and its application was abandoned. C’est la vie.
As it turns out, the Sharky’s Dry Goods decision is distinguished more often than it is followed. Perhaps this is because, as the dissent pointed out, goods identified by a humorous mark could just as easily originate in the location indicated (i.e., Paris) as elsewhere – “the French being, presumably, as capable as Americans of devising whimsical or sardonic trademarks.”
These days, if you are looking for the Paris Beach Club or a Paris Beach Club t-shirt, you are unlikely to find it in Paris, or in stores in the U.S. Your best bet appears to be an actual beach club designed by Paris Hilton at the Azure resort in Manila. Perhaps I can convince PTMG to hold its next meeting in the Philippines!