## Facts

- Three South Dakota jewelry manufacturers in the Black Hills region produced three-color gold jewelry in a grape-and-leaf design and marketed it as “Black Hills Gold Jewelry.”
- The manufacturers traced their commercial origins to early Black Hills jewelry production and associated the name with regional origin and product reputation.
- Gold Rush, Inc. and related retailers marketed similar jewelry made outside the Black Hills using phrases such as “Black Hills Gold” and “Black Hills Gold Jewelry,” sometimes paired with Black Hills-related imagery.
- Plaintiffs alleged defendants’ labeling and advertising misrepresented geographic origin and would likely mislead consumers into believing the goods were made in the Black Hills.
- Plaintiffs sued for injunctive relief under Lanham Act § 43(a), seeking to stop use of “Black Hills Gold” and “Black Hills Gold Jewelry” for jewelry not manufactured in the Black Hills.
- The district court concluded plaintiffs did not have exclusive rights to the phrase for all uses, but enjoined defendants from using the phrases to describe jewelry not made in the Black Hills of South Dakota.

## Issues

1. Whether use of “Black Hills Gold” and “Black Hills Gold Jewelry” for jewelry made outside the Black Hills constitutes a false designation of geographic origin under Lanham Act § 43(a).
2. Whether “Black Hills Gold Jewelry” is generic for a jewelry style or merely geographically descriptive of origin.
3. Whether injunctive relief may be granted where plaintiffs assert a common-law, certification-type interest in the geographic designation despite no federal registration and no exclusive trademark monopoly.
4. Whether the scope of the injunction barring use of the phrases for non-Black-Hills goods was proper.

## Decision

- The Eighth Circuit affirmed the judgment and injunction.
- The court upheld the finding that “Black Hills Gold Jewelry” was not generic but geographically descriptive of jewelry manufactured in the Black Hills.
- The court agreed that defendants’ use of the phrases on jewelry not made in the Black Hills amounted to a false designation of origin under § 43(a).
- The court accepted that equitable relief could rest on § 43(a) together with plaintiffs’ common-law, certification-type interest in preserving the geographic meaning of the designation.
- The court rejected challenges to evidentiary rulings, finding no abuse of discretion.
- The court held the injunction was appropriately limited: it did not bar making the jewelry style, only misrepresenting its geographic origin.

## Legal Principles

- Lanham Act § 43(a) authorizes injunctive relief against false designations of origin, including misrepresentations of geographic source likely to mislead consumers.
- A geographically descriptive designation is not treated as generic where evidence supports that consumers and the trade primarily understand it as indicating regional origin rather than a product style.
- Courts may grant equitable relief to prevent deceptive use of a geographic designation even without a federally registered certification mark and even where the plaintiff lacks exclusive rights to the words for all purposes.
- An injunction in geographic-origin cases may be tailored to prohibit deceptive labeling while permitting lawful competition in producing similar goods.

## Conclusion

The Eighth Circuit sustained an injunction preventing sellers from describing jewelry as “Black Hills Gold” or “Black Hills Gold Jewelry” unless it was made in South Dakota’s Black Hills, holding that the term was geographically descriptive and that contrary use was actionable as a false designation of origin under Lanham Act § 43(a).


Black Hills Jewelry Mfg. Co. v. Gold Rush, Inc., 633 F.2d 746 (8th Cir. 1980)