## Facts

- Les Halles de Paris J.V. operated a New York restaurant offering French kosher cuisine and sought to register the service mark **LE MARAIS** for “restaurant services.”
- “Le Marais” is a neighborhood in Paris associated with Jewish culture and described in the record as a fashionable district with restaurants, galleries, boutiques, and museums.
- The PTO refused registration under Lanham Act § 2(e)(3) as **primarily geographically deceptively misdescriptive**.
- The TTAB affirmed, finding that an appreciable segment of relevant consumers would view “Le Marais” primarily as a geographic place in Paris and would likely believe there was a connection between the restaurant and that place.
- After the TTAB decision, controlling Federal Circuit precedent interpreted § 2(e)(3), in light of NAFTA-related amendments, to require proof of **materiality** (that the geographic misrepresentation would likely affect purchasing decisions).

## Issues

1. Whether the TTAB applied the correct legal standard under Lanham Act § 2(e)(3) in refusing registration of **LE MARAIS** for restaurant services.
2. Whether § 2(e)(3) requires a showing that any geographic misrepresentation is **material** to consumers’ purchasing decisions, and whether the TTAB made that determination.

## Decision

- The Federal Circuit **vacated** the TTAB’s refusal and **remanded**.
- The court held that the TTAB applied an **outdated** § 2(e)(3) standard that did not incorporate the post-NAFTA requirement of **materiality**.
- The court did not decide whether **LE MARAIS** is registrable; it directed the TTAB to reconsider the application under the current test, including materiality.

## Legal Principles

- A mark is “primarily geographically deceptively misdescriptive” under Lanham Act § 2(e)(3) only if:
  - the primary significance of the mark is a generally known geographic location;
  - consumers are likely to believe the goods or services originate in that location when they do not; and
  - the geographic misrepresentation is **material**, meaning it is likely to be a material factor in a significant portion of consumers’ purchasing decisions.
- TTAB refusals under § 2(e)(3) must expressly address **materiality**; it is insufficient to show only likely consumer belief in a geographic connection or origin.

## Conclusion

The Federal Circuit vacated the TTAB’s refusal to register **LE MARAIS** because the Board used an outdated § 2(e)(3) framework and remanded for application of the post-NAFTA standard requiring proof that any geographic misrepresentation would likely be material to consumers’ decision to patronize the restaurant.


In re Les Halles de Paris J.V., 334 F.3d 1371 (Fed. Cir. 2003)