## Facts

- Nantucket, Inc. applied to register the word mark NANTUCKET on the Principal Register for “men’s shirts,” claiming first use in February 1978.
- The examining attorney refused registration under Lanham Act § 2(e)(2), asserting the mark was primarily geographically descriptive or, because the shirts did not originate on Nantucket Island, primarily geographically deceptively misdescriptive.
- The applicant acknowledged the shirts did not originate from Nantucket Island and argued the term was arbitrary for shirts because consumers did not associate Nantucket Island with men’s shirts.
- The Trademark Trial and Appeal Board affirmed the refusal, treating NANTUCKET as a geographic term with no non-geographic meaning and concluding use on non-Nantucket shirts was geographically deceptively misdescriptive.
- The applicant appealed the TTAB decision to the Court of Customs and Patent Appeals.

## Issues

1. Whether NANTUCKET, as applied to men’s shirts not originating from Nantucket Island, is “primarily geographically deceptively misdescriptive” under Lanham Act § 2(e)(2).
2. Whether refusal under § 2(e)(2) requires evidence that purchasers are likely to believe the goods originate in the named place and be deceived.

## Decision

- The court reversed the TTAB.
- The court held the PTO could not refuse registration as primarily geographically deceptively misdescriptive without a reasonable, evidence-supported basis to believe purchasers of men’s shirts would be misled into thinking the shirts originated from Nantucket Island.
- The record lacked evidence that the purchasing public associates Nantucket Island with men’s shirts or expects such goods to come from there.

## Legal Principles

- Under § 2(e)(2), geographic descriptiveness or misdescriptiveness must be evaluated “when applied to the goods of the applicant,” requiring attention to the nature of the goods and marketplace context.
- A finding of “primarily geographically deceptively misdescriptive” requires more than recognition of a place name; it requires an evidentiary basis that consumers are likely to be deceived about geographic origin.
- Agency analysis that treats geographic renown as sufficient, without considering consumer association between the place and the specific goods, is inadequate for a deceptiveness refusal.

## Conclusion

Because there was no evidence that consumers would associate men’s shirts with Nantucket Island or be misled about origin, the mark NANTUCKET could not be refused registration as primarily geographically deceptively misdescriptive under § 2(e)(2).


In re Nantucket, Inc., 677 F.2d 95 (C.C.P.A. 1982)