Volk Art, Inc.

Trademark Trial and Appeal Board

Jul 8, 1998

No. 74693416 (T.T.A.B. Jul. 8, 1998)

NOT CITABLE AS PRECEDENT
Paper No. 12
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Volk Art, Inc.
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Serial No. 74/693,416
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Vivian Polak of LeBoeuf, Lamb, Greene & MacRae, L.L.P. for
Volk Art, Inc.
Susana Tuccillo, Trademark Examining Attorney, Law Office
109 (Deborah Cohn, Managing Attorney).
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Before Cissel, Seeherman and Hohein, Administrative
Trademark Judges.
Opinion by Cissel, Administrative Trademark Judge:
On June 26, 1995, applicant filed an application to
register the mark “BLANC DE CHINE” on the Principal Register
for “porcelain, namely lamp bases, pots and figurines,” in
Class 21. The application was based on applicant’s
assertion that it possessed a bona fide intention to use the
mark on the specified goods in commerce.
Applicant subsequently claimed ownership of
Registration No. 1,912,617. That registration was issued on
August 15, 1995 for the same mark for various items of
clothing.
Ser No. 74/693,416
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In the instant application, the Examining Attorney
refused registration under Sections 2(a) and 2(e)(1) of the
Trademark Act on the grounds that the mark sought to be
registered is both deceptive, as applied to the goods set
forth in the application, and also that it is deceptively
misdescriptive of them. In support of the refusal to
register, she made of record copies of excerpts from
published articles retrieved from the Nexis computerized
database. The articles show that “blanc de Chine” is a term
used to identify a valuable type of China or porcelain which
was made in China between the fifteenth and nineteenth
centuries. Typical examples of these excerpts include the
following: “…the focus is on the great age of blanc de
Chine--1640-1710…”; “…19th century French blanc de chine
glazed terra cotta figures for $12,500”; and “Blanc de chine
is a great porcelain….”
The Examining Attorney took the position that the mark
is deceptive within the meaning of Section 2(a) of the Act
because, if applicant’s goods are not blanc de Chine or do
not contain blanc de Chine, the mark will deceive purchasers
into thinking that they are or do, and the deception will be
a material factor in the decision to buy the goods. She
also argued that the mark is deceptively misdescriptive
within the meaning of Section 2(e)(1) because, if
applicant’s goods are not blanc de Chine or they do not
Ser No. 74/693,416
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contain blanc de Chine, consumers would nonetheless be
likely to understand the mark as indicating that the goods
bearing it either are blanc de Chine, or that they contain
blanc de Chine.
Applicant responded to the refusals to register with
argument against both grounds for refusal. Also submitted
was the affidavit of Kawai Fong, applicant’s Vice President.
In it, Mr. Fong states that he is familiar with the products
on which applicant intends to use the mark “BLANC DE CHINE”;
that they will be newly manufactured items, not antiques;
and that he is aware that the term refers to a type of
antique porcelain produced hundreds of years ago, but that
applicant’s goods will neither be blanc de Chine nor contain
blanc de Chine.
The Examining Attorney was not persuaded, and the
refusals to register were made final in the next office
action. Copies of additional excerpts from published
periodicals were submitted which show that authentic blanc
de Chine porcelain is quite valuable, very desirable, and
collectable.
Applicant filed a Notice of Appeal on July 1, 1997.
Both applicant and the Examining Attorney filed briefs, but
no oral hearing was requested.
Attached to the brief was the affidavit of Anita
Andrade, an attorney for applicant. Along with her
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affidavit, applicant submitted copies of pages from the
catalog Sotheby’s Chinese Works of Art (September 23, 1997).
In it, various items of authentic blanc de Chine porcelain
are advertised for thousands of dollars each.
Ordinarily, such materials submitted with an appeal
brief would not be considered by the Board because they were
untimely submitted under Trademark Rule 2.142(d), but we
have considered them in the instant case, because the
Examining Attorney treated them as if they were properly of
record and did not object to them. In fact, her own
arguments concerning the value of authentic blanc de Chine
are supported by these materials. Accordingly, we have
considered them.
Based on this record and the applicable legal
principles which relate to the two sections of the Act on
which the refusals to register are predicated, we affirm
both refusals to register. The term “BLANC DE CHINE” is
unregistrable under Section 2(e)(1) of the Act because it
would give prospective purchasers the idea that applicant’s
porcelain is actually blanc de Chine, which is not so. The
term is unregistrable under Section 2(a) because that
misinformation would likely be a significant factor in a
customer’s decision to purchase applicant’s product.
Turning first to the refusal under Section 2(e)(1), we
note that neither applicant nor the Examining Attorney
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dispute what the two-part test is for determining whether a
mark is misdescriptive under the Lanham Act. First, we must
determine whether the term sought to be registered
misdescribes the goods. Then, if it does, we must answer
the question of whether anyone is likely to believe the
misrepresentation. In order to determine whether Section
2(a) also bars registration, to the test for
misdescriptiveness we must add the issue of whether, if the
term is misdescriptive and prospective purchasers are likely
to believe the misdescription, this misinformation would be
a material factor in the decision to purchase the goods.
See: In re Budge Mfg. Co., Inc., 857 F.2d 773, 8 USPQ2d 1259
(Fed. Cir. 1988); In re Quady Winery, Inc., 221 USPQ 1213
(TTAB 1984); In re Ox-Yoke Originals, Inc., 222 USPQ 352
(TTAB 1983).
There can be no doubt that the term sought to be
registered misdescribes the goods with which applicant
intends to use it. Mr. Fong acknowledges that blanc de
Chine is valuable antique porcelain, whereas applicant’s
lamp bases, pots and figurines will be newly manufactured
items of porcelain, not valuable antiques.
Applicant’s main argument in favor of registration of
the term is basically that no one will believe that
applicant’s products are blanc de Chine, primarily because
genuine blanc de Chine is so expensive. In support of this
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argument applicant points to the information made of record
by the Examining Attorney which notes that authentic blanc
de Chine figures are valued at $12,500 each. Applicant
asserts that its goods will sell for “reasonable” prices,
e.g., small bowls will be priced at $125.00, and a footed
bowl will go for $245.00. The Examining Attorney, however,
notes that not all authentic blanc de Chine costs thousands
of dollars. Two excerpts from the published articles she
made of record, for example, show that some may be had for
considerably less. Two dishes are offered for $100 to $200,
and a vase is priced at $325. Moreover, although applicant
argues that its porcelain will be sold at prices comparable
to these, it is significant that nothing prohibits applicant
from using the term as a mark on replicas of blanc de Chine
figurines, or from selling them for prices comparable to, or
only slightly less than, similar items of genuine blanc de
Chine.
In the same sense, we are not persuaded by applicant’s
contention that no one will mistakenly believe applicant’s
goods are blanc de Chine because they will be sold only in
applicant’s retail stores along with housewares and clothing
bearing the same mark. The application contains no such
limitation, and even if it did, someone who is vaguely aware
that blanc de Chine is valuable porcelain and sees it for
sale at affordable prices in one of applicant’s stores would
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not necessarily be aware of other products being offered
there under the same mark. Such a person would understand
applicant’s use of the term to indicate that the goods were
in fact blanc de Chine, and at what may be bargain prices.
Applicant argues that prospective purchasers of its
goods will be either scholars who have an understanding of
what authentic blanc de Chine is, or ordinary consumers who
have no idea. Neither will be misled, according to
applicant. In the former instance, applicant contends, such
experts will not mistake applicant’s products for blanc de
Chine because they know what blanc de Chine is and what its
value is. In the latter situation, ordinary consumers will
simply not know or care, argues applicant.
We agree with the Examining Attorney, however, that the
misrepresentation caused by labeling applicant’s products
with the name of valuable antique goods of the same type
will be believed by a significant part of the prospective
purchasers of applicant’s porcelain. Collectors or other
experts may believe the goods to be either high quality
replicas or genuine blanc de Chine at bargain prices. As
the Examining Attorney notes, this would be particularly
likely if the purchase were made from a catalog or other
printed advertisement, under circumstances where the actual
products were not available for inspection prior to ordering
them. In this regard, it is significant to keep in mind
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that notwithstanding applicant’s argument that these
products will only be sold in applicant’s own stores, which
will sell other household products and clothing under the
same mark, the identification is not so restricted.
As we noted above, people who would only vaguely
recognize the designation as an indication of high quality,
value and hence, desirability, would nonetheless understand
applicant’s use of the term to indicate that applicant’s
goods are blanc de Chine. In addition, the evidence
establishes that blanc de Chine is very desirable, so the
mistaken belief or misunderstanding that applicant’s
products are blanc de Chine would be a material factor in
the purchasing decision.
In summary, the term is unregistrable under Section
2(e)(1) of the Act because applicant’s goods are not blanc
de Chine, whereas porcelain purchasers who encounter the
designation on applicant’s products would believe that they
are blanc de Chine. Further, the term is unregistrable
under Section 2(a) of the Act, not just because the mark is
a misrepresentation and the misrepresentation would be
believed, but also because the misrepresentation would be a
material factor in the decision to buy applicant’s products.
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Accordingly, both refusals to register are affirmed.
R. F. Cissel
E. J. Seeherman
G. D. Hohein
Administrative Trademark Judge,
Trademark Trial & Appeal Board
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