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The United States' two major international trade agreements of the 1990s—the General Agreement on Tariffs and Trade (GATT) and the North American Free Trade Agreement (NAFTA)—included intellectual property provisions that led Congress to amend a number of federal intellectual property statutes, including, inter alia, the Lanham Act provisions dealing with federal registration of trademarks. Specifically, pursuant to Article 1712 of NAFTA, Congress revised the rules that determine whether, and under what circumstances, federal registration is permitted for trademarks that contain geographical indications of origin. In the decade since these enactments, it appeared that the courts had reached a reasonable interpretation of the amendments. Recently, however, the NAFTA amendments to the federal trademark registration rules have received a new and somewhat troubling interpretation.

In two decisions during 2003, the Federal Circuit addressed the Lanham Act standards for federal registration of geographically misdescriptive trademarks-that is, trademarks which imply a geographic origin that is inaccurate. These cases, In re California Innovations, Inc. (addressing trademarks for goods) and In re Les Halles de Paris J.V. (addressing service marks), interpreted sections 2(e)(3) and 2(f) of the Lanham Act in a manner that allows this category of misdescriptive trademarks to be registered on the Principal Register of the Patent and Trademark Office, provided that they are not deceptive within the meaning of section 2(a).

As the author discusses, the Federal Circuit's interpretation of the NAFTA amendments to section 2 of the Lanham Act may be contrary to the legislative intent underlying those amendments. While the court's approach is not unreasonable as a matter of policy—and may even represent a policy choice more sound than that made by Congress when it enacted the NAFTA amendments—it appears to be inconsistent with both the text and the legislative history of these registration provisions. Furthermore, contrary to fundamental canons of statutory construction, the court's interpretation renders section 2(e)(3) of the statute superfluous and the last sentence of section 2(f) arguably inoperative.

Publication Citation

12 J. Intell. Prop. L. 125 (2004).