## Facts

- Hiromichi Wada filed an intent-to-use application to register NEW YORK WAYS GALLERY for leather goods, including bags, luggage, backpacks, wallets, and tote bags.
- Wada disclaimed exclusive rights to NEW YORK apart from the composite mark.
- The examining attorney refused registration under 15 U.S.C. § 1052(e)(3), concluding NEW YORK’s primary significance was geographic and consumers associate relevant leather goods with New York.
- Wada did not show the goods originated in, or had a meaningful connection to, New York; the record indicated Wada was a Michigan resident and Japanese citizen.
- The Trademark Trial and Appeal Board affirmed the refusal, finding New York is a well-known place associated with designing and manufacturing leather goods and concluding WAYS GALLERY did not change the mark’s primary geographic meaning.
- Wada appealed; the Federal Circuit reviewed and affirmed the refusal.

## Issues

1. Whether NEW YORK WAYS GALLERY, as applied to leather goods, is primarily geographically deceptively misdescriptive under 15 U.S.C. § 1052(e)(3).
2. Whether disclaiming NEW YORK permits registration of a composite mark that is primarily geographically deceptively misdescriptive, including under the NAFTA-related amendments to § 1052.

## Decision

- The Federal Circuit affirmed the TTAB’s refusal to register the mark.
- The court held that NEW YORK is a generally known geographic location and, for the identified goods, creates a goods/place association likely to cause consumers to believe the goods originate in New York.
- Because the goods did not originate in New York and the geographic misdescription would materially affect consumer purchasing decisions, the mark fell within § 1052(e)(3).
- The court held that a disclaimer of the geographic term does not render a primarily geographically deceptively misdescriptive mark registrable after the statutory amendments.

## Legal Principles

- A mark is primarily geographically deceptively misdescriptive under 15 U.S.C. § 1052(e)(3) when (1) the primary significance is geographic, (2) consumers are likely to believe the goods come from that place due to a goods/place association, and (3) the misdescription is material because the goods do not come from that place.
- Adding other wording to a place name does not avoid § 1052(e)(3) if the place name remains the mark’s primary significance and the additional wording does not dispel the origin inference.
- A disclaimer does not cure a § 1052(e)(3) refusal; post-amendment, primarily geographically deceptively misdescriptive marks are barred from registration even if the applicant disclaims exclusive rights in the geographic term.

## Conclusion

The Federal Circuit upheld refusal of NEW YORK WAYS GALLERY for leather goods because the mark conveyed a materially deceptive geographic origin message tied to New York, and a disclaimer could not overcome the statutory bar against primarily geographically deceptively misdescriptive marks.


In re Wada, 194 F.3d 1297 (Fed. Cir. 1999)