Pursuant to 15 U.S.C. §1052(a), a mark that is geographically deceptive of the goods or services cannot be registered on the Principal Regiser. As noted in TMEP §1210.05(a), the test for determining whether a mark is primarily geographically deceptively misdescriptive under §2(e)(3) is the same as the test for determining whether a mark is deceptive under §2(a). To support a refusal of registration on the ground that a geographic term is deceptive under §2(a), the examining attorney must show that:

Prima facie refusal to register a mark as geographically deceptive requires a showing that:

  1. (1) the primary significance of the mark is a generally known geographic location;
  2. (2) the goods or services do not originate in the place named in the mark;
  3. (3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark; and
  4. (4) the misrepresentation is a material factor in the consumer's decision to buy the goods or use the services.
    (Same test as for primarily geographically deceptively misdescriptive marks)

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  • The purpose of Section 2(e)(2) of the Act is not to punish a particular business for using a geographic name, but rather to leave geographic names free for all businesses operating in the same area to inform customers where their goods or services originate.
    • In re Spirits of New Merced, LLC, Serial No. 78710805, (TTAB 2007)
      • Applicant argues that "it should not be penalized for its relative proximity to the Yosemite National Park." (Brief, p. 9.) However, the purpose of Section 2(e)(2) of the Act is not to punish a particular business for using a geographic name, but rather to leave geographic names free for all businesses operating in the same area to inform customers where their goods or services originate. See In re MCO Properties Inc., 38 USPQ2d 1154, 1156 (TTAB 1995). There is no question that "Yosemite" is a term that applicant's competitors in Merced are entitled to use to describe the geographic origin of their beer.
  • The PTO usually addresses geographically deceptive marks under subsection (e)(3), while deception in general continues to be addressed under subsection (a).
    • In re Beaverton Foods, Inc., Serial No. 76624790, (TTAB 2007)
      • Although the Court recognized that Section 2(a) "has traditionally been used to reject geographic marks that materially deceive the public," California Innovations, supra, 66 USPQ2d at 1854, as a result of its decision the Court noted that it anticipated that the "PTO will usually address geographically deceptive marks under subsection (e)(3), while deception in general continues to be addressed under subsection (a)." Id. at 1858 (emphasis added).
    • In re Beaverton Foods, Inc., Serial No. 76624790, (TTAB 2007)
      • The Board recently discussed California Innovations in In re South Park Cigar Inc., 82 USPQ2d 1507 (TTAB 2007). The Board stated that "in keeping with the Court's instructions and its construction of the statute, we deem the appropriate refusal in this case involving an allegedly geographically deceptive mark to be only the Section 2(e)(3) ‘primarily geographically deceptively misdescriptive' refusal, and not the Section 2(a) deceptiveness refusal." Id. at 1509. The Board noted that "unless the applicant is seeking registration ... on the Principal Register under Section 2(f) based on a claim that the mark had acquired distinctiveness prior to December 8, 1993, the proper refusal is under Section 2(e)(3), not Section 2(a)..." Id. at 1509 n. 3.
  • Where an applicant is seeking registration for a mark with a geographic term on the Principal Register under Section 2(f) based on a claim that the mark had acquired distinctiveness prior to December 8, 1993, a geographically deceptive mark is properly refused registration under Section 2(a).
    • In re Beaverton Foods, Inc., Serial No. 76624790, (TTAB 2007)
      • Building on the decision in South Park Cigar, we hold that where an applicant is seeking registration for a mark with a geographic term on the Principal Register under Section 2(f) based on a claim that the mark had acquired distinctiveness prior to December 8, 1993, a geographically deceptive mark is properly refused registration under Section 2(a). Nothing in the statute or legislative history dictates otherwise. Moreover, this analysis is consistent with the practice of the USPTO. See TMEP Section 1210.05(a) (4th ed. 2005).
  • The language of Section 2(f) clearly states that marks refused under Section 2(a) are not registrable under its provisions. The exception clearly applies only to pre-NAFTA "primarily geographically deceptively misdescriptive" marks, but not to pre-NAFTA "geographically deceptive" marks
    • In re Beaverton Foods, Inc., Serial No. 76624790, (TTAB 2007)
      • Contrary to applicant's argument, we find that the Section 2(f) grandfather clause does not protect those "geographically deceptive" marks that would have been considered unregistrable under Section 2(a) prior to NAFTA. Rather, the grandfather clause is meant to provide a means for registering those marks that, prior to NAFTA implementation, could have been registrable under Section 2(f), i.e., primarily geographically deceptively misdescriptive marks where the geographic misdescriptiveness was not material to the purchasing decision. The fact that primarily geographically deceptively misdescriptive marks post-NAFTA are now the equivalent of geographically deceptive marks pre-NAFTA does not render registrable a mark that pre-NAFTA would have been refused as geographically deceptive under Section 2(a). The language of Section 2(f) clearly states that marks refused under Section 2(a) are not registrable under its provisions. The exception clearly applies only to pre-NAFTA "primarily geographically deceptively misdescriptive" marks, but not to pre-NAFTA "geographically deceptive" marks.
    • In re Beaverton Foods, Inc., Serial No. 76624790, (TTAB 2007)
      • In short, the purpose of the grandfather clause in Section 2(f) is to allow registration of primarily geographically deceptively misdescriptive marks that would have been eligible for registration under Section 2(f) prior to the NAFTA amendments and not, as applicant's interpretation would have it, to provide a windfall to applicants seeking to register marks that prior to the NAFTA amendments would have been unregistrable under Section 2(a). Moreover, as noted above, a mark that was geographically deceptive prior to December 8, 1993 was not eligible for registration under Section 2(f) and thus cannot be covered by the grandfather clause.
    • In re South Park Cigar, Inc., Serial No. 78486382, (TTAB 2007)
      • The addition of a materiality element to the Section 2(e)(3) test is "due to the NAFTA changes in the Lanham Act." Id. The materiality showing now required in both the Section 2(a) and Section 2(e)(3) refusals "equates this test [under Section 2(e)(3)] with the elevated standard applied under §1052(a)." Id., 329 F.3d at 1340, 66 USPQ2d at 1857. However, the court went on to state that "geographic deception is specifically dealt with in subsection (e)(3), while deception in general continues to be addressed under subsection (a). Consequently, this court anticipates that the PTO will usually address geographically deceptive marks under subsection (e)(3) of the amended Lanham Act rather than subsection (a). While there are identical legal standards for deception in each section, subsection (e)(3) specifically involves deception involving geographic marks." Id., 329 F.3d at 1341-42, 66 USPQ2d at 1858.
    • In re South Park Cigar, Inc., Serial No. 78486382, (TTAB 2007)
      • Thus, in keeping with the Court's instructions and its construction of the statute, we deem the appropriate refusal in this case involving an allegedly geographically deceptive mark to be only the Section 2(e)(3) "primarily geographically deceptively misdescriptive" refusal, and not the Section 2(a) deceptiveness refusal.3 See United States Playing Card Company v. Harbro, LLC, ___ USPQ2d ___, Opposition No. 91162078 (TTAB, December 14, 2006). FOOTNOTE 3 "In TMEP section 1210.05(a), it is stated that:
        "...because the statute expressly prohibits registration of deceptive marks on the Supplemental Register or on the Principal Register under §2(f), the examining attorney will initially refuse registration of geographically deceptive marks under both §§2(a) and 2(e)(3). If the applicant alleges use in commerce prior to December 8, 1993 and amends to the Supplemental Register, or establishes that the proposed mark acquired distinctiveness under §2(f) before December 8, 1993, the examining attorney will withdraw the §2(e)(3) refusal, but will not withdraw the §2(a) refusal."

        It would appear to us that the converse is also true in a case like the case at bar involving a geographic mark: unless the applicant is seeking registration on the Supplemental Register with a claim of first use in commerce predating the NAFTA implementation date of December 8, 1993, or is seeking registration on the Principal Register under Section 2(f) based on a claim that the mark had acquired distinctiveness prior to December 8, 1993, the proper refusal is under Section 2(e)(3), not Section 2(a), and the Section 2(a) refusal, if made, should be withdrawn."

  • By an amendment to seek registration under Section 2(f) and its admission that the goods do not emanate from the geographic location, the TTAB may conclude that applicant has conceded that its mark is, at least, primarily geographically misdescriptive.
    • In re Beaverton Foods, Inc., Serial No. 76624790, (TTAB 2007)
      • By its amendment to seek registration under Section 2(f) and its admission that the goods do not emanate from NAPA VALLEY, we may conclude that applicant has conceded that its mark is, at least, primarily geographically misdescriptive. Cf. Yamaha Int'l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988); In re Cabot Corp., 15 USPQ2d 1224, 1229 (TTAB 1990).

        Moreover, applicant does not dispute that NAPA VALLEY is a geographic term and, by seeking registration under Section 2(f), has conceded that the mark as a whole is geographically misdescriptive.

  • The TTAB is not bound by a previous examining attorney's determination that the same mark was entitled to register, and to the extent that registration was issued in error, we would not repeat the error by permitting the mark to register again.
    • In re Spirits of New Merced, LLC, Serial No. 78710805, (TTAB 2007)
      • In addition, we are not bound by a previous examining attorney's determination that the same mark was entitled to register, and to the extent that registration was issued in error, we would not repeat the error by permitting the mark to register again. See In re Cooper, 254 F.2d 611, 117 USPQ 396, 401 (CCPA 1958) ("...the decision of this case in accordance with sound law is not governed by possibly erroneous past decisions by the Patent Office"). See also In re Stenographic Machines, Inc., 199 USPQ 313, 317 (Comm'r Pats. 1978) ("Consistency of Office practice must be secondary to correctness of Office practice.").
  • Each case must be decided on its own merits.
    • In re Consolidated Specialty Restaurants, Inc., Serial No. 75857797, (TTAB 2004).
      • In any event, this third-party registration evidence is not persuasive of a different result in this case. While uniform treatment under the Trademark Act is an administrative goal, the Board's task in an ex parte appeal is to determine, based on the record before us, whether applicant's mark is primarily geographically deceptively misdescriptive. As often noted by the Board, each case must decided on its own merits. We are not privy to the records of the third-party registration files and, moreover, the determination of registrability of those particular marks by the Examining Attorneys cannot control our decision in the case now before us. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) ("Even if some prior registrations had some characteristics similar to [applicant's application], the PTO's allowance of such prior registrations does not bind the Board or this court.")
  • Test to consider a mark primarily geographically descriptive under Section 2(e)(2).
    • In re Spirits of New Merced, LLC, Serial No. 78710805, (TTAB 2007)
      • In order for a mark to be considered primarily geographically descriptive under Section 2(e)(2), it must be shown that (1) the mark's primary significance is a generally known geographic location; and (2) that the relevant public would be likely to make a goods/place association, that is, would be likely to believe that the goods originate in the place named in the mark. See In re Save Venice New York, Inc., 259 F.3d 1346, 59 USPQ2d 1778 (Fed. Cir. 2001); In re Nantucket, 677 F.2d 95, 213 USPQ 889 (CCPA 1982); In re Brouwerij Nacional Balashi NV, 80 USPQ2d 1820 (TTAB 2006); In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001); and In re California Pizza Kitchen, Inc., 10 USPQ2d 1704 (TTAB 1988). Provided that these conditions are met and the goods come from the place named by or in the mark, the mark is primarily geographically descriptive.
    • In re Narada Productions, Inc., Serial No. 75/460,277, (TTAB 2001).
      • It is settled that: "[w]hether a mark is primarily geographically deceptively misdescriptive … requires an analysis under a two prong test to establish (1) whether the primary significance of the mark as it is used is a generally known geographic place; and (2) whether the public would make a "goods [and/or services]/place association," i.e., believe that the goods [and/or services] for which the mark is sought to be registered originate in that place." Institut National Des Appellations D'Origine v. Vintners Int'l Co., 958 F.2d 1574, 22 USPQ2d 1190, 1195 (Fed. Cir. 1992). See also In re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889 (CCPA 1982).
  • Test to consider a mark primarily geographically deceptively misdescriptive under Section 2(e)(3).
    • In re South Park Cigar, Inc., Serial No. 78486382, (TTAB 2007)
      • To maintain a refusal under Section 2(e)(3), the Office must establish that (1) the primary significance of the mark is a generally known geographic location, (2) the consuming public is likely to believe the place identified by the mark indicates the origin of the goods bearing the mark, when in fact the goods do not come from that place, and (3) the misrepresentation would be a material factor in the consumer's decision to purchase the goods. California Innovations, supra, 329 F.3d at 1341, 66 USPQ2d at 1858.
    • In re Boyd Gaming Corporation, Serial No. 75/541,256, (TTAB 2000).
      • In order to establish a prima facie case for refusal because a mark is primarily geographically deceptively misdescriptive under Section 2(e)(3) of the Act, the Examining Attorney must show that the primary significance of the mark is geographic; that purchasers would be likely to think that the goods originate in the geographic place identified in the mark, that is, purchasers would make a goods/place association; and that the goods do not in fact originate in the place identified in the mark. In re Wada, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999)(NEW YORK WAYS GALLERY for various types of bags, backpacks, purses, etc., held unregistrable under Section 2(e)(3)); In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); In re Loew's Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985); and In re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889 (CCPA 1982).
    • In re South Park Cigar, Inc., Serial No. 78486382, (TTAB 2007)
      • As noted above, the elements of a Section 2(e)(3) refusal are as follows: (1) the primary significance of the mark is a generally known geographic location; (2) the consuming public is likely to believe the place identified by the mark indicates the origin of the goods bearing the mark (i.e., that a goods/place association exists), when in fact the goods do not come from that place; and (3) the misrepresentation would be a material factor in the consumer's decision to purchase the goods. California Innovations, supra, 329 F.3d at 1341, 66 USPQ2d at 1858.
    • In re Broyhill Furniture Industries, Inc., Serial No. 75/473,959, (TTAB 2001).
      • In order to establish a prima facie case for refusal on the ground that a mark is primarily geographically deceptively misdescriptive of an applicant's goods within the meaning of Section 2(e)(3) of the statute, the Examining Attorney must show that: (1) the primary significance of the mark is a generally known geographic place; and (2) purchasers would be likely to think or reasonably believe that the applicant's goods originate in or are connected with the geographic place identified by the mark, that is, they would make a goods/place association, when in fact the goods do not originate in or are not connected with the place identified by the mark. See, e.g., In re Save Venice New York, Inc., No. 00- 1458, slip op. at 3 (Fed. Cir. July 27, 2001); In re Wada, 194 F.3d 1297, 52 USPQ 1539, 1540 (Fed. Cir. 1999); In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450, 1452 (Fed. Cir. 1987); In re Loew's Theatres, Inc., 769 F.2d 764, 226 USPQ 865, 867 (Fed. Cir. 1985); and In re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889, 892-93 (CCPA 1982).
    • In re Consolidated Specialty Restaurants, Inc., Serial No. 75857797, (TTAB 2004).
      • The Court articulated the following standard for determining whether a mark is primarily geographically deceptively misdescriptive (66 USPQ2d at 1858): "Thus, due to the NAFTA changes in the Lanham Act, the PTO must deny registration under §1052(e)(3) if (1) the primary significance of the mark is a generally known geographic location, (2) the consuming public is likely to believe the place identified by the mark indicates the origin of the goods bearing the mark, when in fact the goods do not come from that place, and (3) the misrepresentation was a material factor in the consumer's decision."
    • United States Playing Card Company v. Harbro, LLC, Opposition No. 91162078, (TTAB 2006).
      • To prove that VEGAS for playing cards is primarily geographically deceptively misdescriptive, opposer must prove the following: "a. The primary significance of VEGAS is a generally known geographic location; b. The consuming public is likely to believe that VEGAS indicates the origin of the playing cards, when in fact the playing cards do not come from Las Vegas; and, c. The misrepresentation is a material factor in the consumer's decision." In re California Innovations Inc., 66 USPQ2d at 1858.
  • As to the first part of the test, a mark is not "primarily" geographic where the geographic meaning is minor, obscure, remote, or unconnected with the goods.
    • In re Spirits of New Merced, LLC, Serial No. 78710805, (TTAB 2007)
      • As to the first part of the test, a mark is not "primarily" geographic where the geographic meaning is minor, obscure, remote, or unconnected with the goods. In re Wada, 194 F.3d 1297, 52 USPQ2d 1539, 1540 (Fed. Cir. 1999); In re Loew's Theatres, Inc., 769 F.2d 764, 226 USPQ 865, 867 (Fed. Cir. 1985) (use of a geographic term in a fictitious, arbitrary or fanciful manner, is not "primarily" as a geographic designation); and In re Brouwerij Nacional Balashi NV, supra at 1824.
    • In re Spirits of New Merced, LLC, Serial No. 78710805, (TTAB 2007)
      • Thus, registration should not be refused where, for example, the place named in the mark is so obscure or remote that purchasers would fail to recognize the term as indicating the geographical source of the goods to which the mark is applied; or an admittedly well-recognized term has other meanings, such that the term's geographical significance may not be the primary significance to prospective purchasers. See In re Cambridge Digital Systems, 1 USPQ2d 1659 (TTAB 1986).
  • A recognized nickname or other informal name for a geographic location is considered the equivalent of the official or formal name for purposes of determining registrability of the geographic term.
    • In re Spirits of New Merced, LLC, Serial No. 78710805, (TTAB 2007)
      • It is well settled that a recognized nickname or other informal name for a geographic location is considered the equivalent of the official or formal name for purposes of determining registrability of the geographic term. See In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998) (the term CAROLINA, used to indicate either North Carolina or South Carolina, is geographically descriptive); and In re Charles S. Loeb Pipes, Inc., 190 USPQ 238, 246 (TTAB 1975) (OLD DOMINION is an accepted nickname for the State of Virginia; "nicknames and even abbreviations and maps of geographical areas and the names of the geographical area that they identify are, for purposes of registration, identical, and ... the same criteria for registration must necessarily apply thereto").
  • The fact a geographic name may have other meanings does not necessarily rebut the prima facie showing that the primary meaning is geographic.
    • In re Spirits of New Merced, LLC, Serial No. 78710805, (TTAB 2007)
      • Applicant argues that the primary significance of "Yosemite" is not geographic because, when used by itself, the term has another meaning. Pointing to the website, yosemite.ca.us, which explains the origin of the term "Yosemite," applicant states that the word means "those who kill," or "the killers" in the Native American Miwok tribal language and, as noted earlier, applicant has amended the application to include a translation of this "foreign wording" in the mark.

        We are not persuaded by this argument. There is no evidence that the general public would be familiar with the derivation of "Yosemite" or that this meaning would be anything but obscure to them. Even if consumers were aware of this meaning, it would not detract from the primary meaning of "Yosemite" as denoting a well-known geographic region. See, e.g., In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1697 (TTAB 1992) (while "London" also has surname significance, the primary connotation of the term is geographical); and In re The Cookie Kitchen, Inc., 228 USPQ 873, 874 (TTAB 1986) (the fact that "Manhattan" is also the name of a cocktail does not rebut the prima facie showing that the primary meaning is geographic).

  • Burden of Proof: It is well established that the USPTO has the burden of establishing a prima facie case that the mark is primarily geographically deceptively misdescriptive.
    • In re Consolidated Specialty Restaurants, Inc., Serial No. 75857797, (TTAB 2004).
      • It is well established that the USPTO has the burden of establishing a prima facie case that the mark is primarily geographically deceptively misdescriptive. See In re Pacer Technology, 338 F.3d 1348, 67 USPQ2d 1629 (Fed. Cir. 2003) and cases cited therein.
  • Burden of Proof: The PTO's burden is simply to establish that there is a reasonable predicate for its conclusion that the public would be likely to make the particular goods/place association on which it relies... The issue is not the fame or exclusivity of the place name, but the likelihood that a particular place will be associated with particular goods.
    • In re South Park Cigar, Inc., Serial No. 78486382, (TTAB 2007)
      • The Loew's Theatres court, in a further statement of the rule which was quoted by the court in the California Innovations case, held that "[t]he PTO's burden is simply to establish that there is a reasonable predicate for its conclusion that the public would be likely to make the particular goods/place association on which it relies... The issue is not the fame or exclusivity of the place name, but the likelihood that a particular place will be associated with particular goods." California Innovations, supra, 329 F.3d at 1338, 67 USPQ2d at 1855, quoting from In re Loew's Theatres, supra, 769 F.2d at 767-69, 226 USPQ at 868.
  • To establish a goods/place association, the examining attorney must only show a "reasonable basis" for concluding that the public is likely to believe that the mark identifies the place from which the goods originate.
    • In re Broyhill Furniture Industries, Inc., Serial No. 75/473,959, (TTAB 2001).
      • "To establish a goods/place association, the examining attorney must only show a "reasonable basis" for concluding that the public is likely to believe that the mark identifies the place from which the goods originate. In re Loews Theatres, Inc., ... 226 USPQ ... [at] 868 .... The examining attorney need not show the fame of the place, but rather the likelihood that the particular place will be associated with the particular goods. Id."
  • The examining attorney need not show the fame of the place, but rather the likelihood that the particular place will be associated with the particular goods.
    • In re Broyhill Furniture Industries, Inc., Serial No. 75/473,959, (TTAB 2001).
      • "To establish a goods/place association, the examining attorney must only show a "reasonable basis" for concluding that the public is likely to believe that the mark identifies the place from which the goods originate. In re Loews Theatres, Inc., ... 226 USPQ ... [at] 868 .... The examining attorney need not show the fame of the place, but rather the likelihood that the particular place will be associated with the particular goods. Id."
  • The PTO need not show that the place is well-known or noted for the goods; rather, the PTO must show only a reasonable basis for concluding that the public is likely to believe the mark identifies the place from which the goods originate.
    • In re South Park Cigar, Inc., Serial No. 78486382, (TTAB 2007)
      • In the case of In re Loew's Theatres, Inc., supra, 769 F.2d at 768, 226 USPQ at 868 (a pre-NAFTA case which the court subsequently has stated (in California Innovations, supra) is still good law with respect to the "goods/place association" requirement of a Section 2(e)(3) refusal), the court noted that to establish a goods/place association, the PTO need not show that the place is well-known or noted for the goods; rather, "...the PTO must show only a reasonable basis for concluding that the public is likely to believe the mark identifies the place from which the goods originate..."
  • The examining attorney need not show that the public would actually make the asserted association.
    • In re Spirits of New Merced, LLC, Serial No. 78710805, (TTAB 2007)
      • In establishing a goods/place association between beer and Yosemite, the examining attorney need not show that the public would actually make the asserted association, i.e., that the public actually believes the beer is made in Yosemite National Park. See In re Nantucket Allserve Inc., 28 USPQ2d 1144, 1146 (TTAB 1993) ("even assuming for the sake of argument that the public does not believe that NANTUCKET NECTARS soft drinks are actually manufactured on Nantucket (and of course they are not), nevertheless, these goods originate from a company" that has a significant connection to Nantucket). Rather the examining attorney need only show, as she has done here, a "reasonable basis" for concluding that the public would make the goods/place association. In re Loew's Theatres, Inc., supra at 868. The facts that there are restaurants serving beverages in Yosemite and that applicant is located in or nearby the Yosemite region and promotes an association with Yosemite, establish a goods/place association of beer with Yosemite. Consumers would likely believe that applicant's beer had its origin in or was in some way connected to Yosemite.
  • By seeking registration under Section 2(f), applicant has not conceded that its mark is geographically deceptive under Section 2(a).
    • In re Beaverton Foods, Inc., Serial No. 76624790, (TTAB 2007)
      • However, by seeking registration under Section 2(f), applicant has not conceded that its mark is geographically deceptive under Section 2(a).
  • Where evidence shows that the selling point of the goods is that it comes form a geographic location, it may be found that such misrepresentation is a material factor in a consumer's decision to purchase these goods.
    • In re Beaverton Foods, Inc., Serial No. 76624790, (TTAB 2007)
      • Finally, we find that the misrepresentation is a material factor in a consumer's decision to purchase these goods inasmuch as the Napa Valley is known for mustard. We particularly note the following statement in the advertisement for applicant's goods that clearly implies that the mustard originates in NAPA VALLEY: "The beautiful Napa Valley produces some of the finest array of gourmet foods. We have selected our favorite Napa Valley Mustards for you to enjoy." Although it is not clear whether this advertisement for applicant's goods was based on applicant's own materials, or whether the language was the idea of the retailer, either way it shows that a selling point for the mustard is that it comes from Napa Valley.
  • The addition of a generic word to a geographical term does not overcome the primary geographic significance of the mark as a whole.
    • In re Spirits of New Merced, LLC, Serial No. 78710805, (TTAB 2007)
      • We find that the primary significance of the term "Yosemite" is geographic, and also that the primary significance of YOSEMITE BEER, in its entirety, is geographic. The addition of a generic word to a geographical term does not overcome the primary geographic significance of the mark as a whole. See In re Brouwerij Nacional Balashi NV, supra at 1821; In re JT Tobacconists, supra at 1082; and In re Cambridge Digital Systems, supra.
  • Where the geographical significance of a term is its primary significance and where the geographical place is neither obscure nor remote, a public association of the goods with the place may ordinarily be presumed from the fact that the applicant's own goods come from the geographical place named in the mark.
    • In re Spirits of New Merced, LLC, Serial No. 78710805, (TTAB 2007)
      • Where the geographical significance of a term is its primary significance and where the geographical place is neither obscure nor remote, a public association of the goods with the place may ordinarily be presumed from the fact that the applicant's own goods come from the geographical place named in the mark. See In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998); and In re California Pizza Kitchen Inc., 10 USPQ2d 1704 (TTAB 1988).
  • When the goods originate at or near the place named in the mark, one can presume an association of applicant's goods with the geographic location.
    • In re Spirits of New Merced, LLC, Serial No. 78710805, (TTAB 2007)
      • Thus, we find that the goods come from Yosemite, the place named in the mark, or at a minimum, that the goods originate in an area which applicant admits and the evidence shows is located near Yosemite. Since the goods originate at or near the place named in the mark, we can presume an association of applicant's beer with the park. See, e.g., In re Joint-Stock Company "Baik" 80 USPQ2d 1305, 1310 (TTAB 2006) ("we presume a goods/place association [of vodka with BAIKALSKAYA meaning "from Baikal"] because applicant is located near Lake Baikal, in the city of Irkutsk"). See also, e.g., Warwood v. Hubbard, 228 USPQ 702, 702 (Mont. 1985) (YELLOWSTONE OUTFITTERS primarily geographically descriptive of outfitting services offered "near Yellowstone Park").
  • Where the evidence shows a substantial part of the party's commercial activities emanate from or are related to a geographic location, and that location is not obscure or remote, it is unnecessary for the Examining Attorney to establish by other evidence that a services/place relationship exists between appellant's services and the geographic location.
    • In re Spirits of New Merced, LLC, Serial No. 78710805, (TTAB 2007)
      • Under the circumstances, nothing more need be shown by the examining attorney in order to establish a goods/place association. See In re Opryland USA Inc., supra at 1413 (TTAB 1986) ("[I]n that the evidence shows a substantial part of appellant's commercial activities emanate from or are related to Nashville, Tennessee, and that city is not obscure or remote, it is unnecessary for the Examining Attorney to establish by other evidence that a services/place relationship exists between appellant's services and the city of that name.").
  • The issue under Section 2(e)(2) is not whether consumers will be confused or deceived, but rather whether applicant has a right to exclude others from using the term to describe the geographic origin of their goods or services.
    • In re Spirits of New Merced, LLC, Serial No. 78710805, (TTAB 2007)
      • We point out that the issue under Section 2(e)(2) is not whether consumers will be "confused or deceived," but rather, as noted earlier, whether applicant has a right to exclude others from using the term to describe the geographic origin of their goods or services.
  • If the goods in fact come from the place named in the mark, then the proper refusal is that the mark is primarily geographically descriptive, under Section 2(e)(2). Such a refusal, in appropriate cases, may be obviated by applicant's submission of a disclaimer of the geographic term.
    • In re South Park Cigar, Inc., Serial No. 78486382, (TTAB 2007)
      • As noted above, one element of the Section 2(e)(3) refusal includes a showing that the applicant's goods in fact do not come from the place named in the mark. If the goods in fact come from the place named in the mark, then the proper refusal is that the mark is primarily geographically descriptive, under Section 2(e)(2). Such a refusal, in appropriate cases, may be obviated by applicant's submission of a disclaimer of the geographic term.
  • If the goods in fact may or will come from the geographic place named in the mark, the second element of the Section 2(e)(3) refusal has not been and cannot be established, and thus Section 2(e)(2) is not a proper basis for refusal and applicant's proffered disclaimer of the geographic term does not suffice to overcome a Section 2(e)(3) refusal.
    • In re South Park Cigar, Inc., Serial No. 78486382, (TTAB 2007)
      • In the present case, applicant has maintained throughout prosecution and on appeal that its goods in fact may or will come from the geographic place named in the mark, that the second element of the Section 2(e)(3) refusal therefore has not been and cannot be established by the Trademark Examining Attorney, and that applicant is willing to submit a disclaimer of YBOR if such disclaimer will put the application in condition for publication. However, as discussed more fully below in connection with the second element of the Section 2(e)(3) refusal, we agree with the Trademark Examining Attorney's contention that applicant has not established that its goods in fact come or will come from the place named in the mark. In view of this finding, we conclude that Section 2(e)(2) is not a proper basis for refusal and that applicant's proffered disclaimer of YBOR does not suffice to overcome a Section 2(e)(3) refusal. See In re Wada, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999).
  • Whether place is generally known is determined not in the abstract or with reference to the nationwide purchasing public, but rather with reference to the relevant purchasing public for the goods or services in question.
    • In re South Park Cigar, Inc., Serial No. 78486382, (TTAB 2007)
      • Taken together, we find that all of this evidence establishes that "Ybor City" is a generally known geographic location. On this record, Ybor City is neither obscure nor remote, especially to the relevant purchasing public, i.e., cigar aficionados specifically and, more generally, people who are or may be traveling to Tampa, Florida. See In re MCO Properties Inc., 38 USPQ2d 1154 (TTAB 1995)(whether place is generally known is determined not in the abstract or with reference to the nationwide purchasing public, but rather with reference to the relevant purchasing public for the goods or services in question).
  • The existence of more than one location bearing the name in question does not detract from the geographical significance of the term for purposes of Sections 2(e)(2) or 2(e)(3).
    • In re South Park Cigar, Inc., Serial No. 78486382, (TTAB 2007)
      • Applicant also argues that Ybor City is not a generally known geographic location because the evidence shows that it is not a "single" place. Applicant contends that there are numerous locations within Tampa, the names of which include the term "Ybor." These include "Ybor," "Ybor City," "Ybor Square," and "Centro Ybor." We are not persuaded by this argument. It is clear from the evidence cited by applicant that all of these places are within Ybor City, and derive their "Ybor" names from that fact. Moreover, even if applicant were correct in asserting that "Ybor" identifies more than one location, it is settled that the existence of more than one location bearing the name in question does not detract from the geographical significance of the term for purposes of Sections 2(e)(2) or 2(e)(3). See, e.g., In re Loew's Theatres, Inc., 749 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985)(DURANGO); In re Cambridge Digital Systems, 1 USPQ2d 1659 (TTAB 1986)(CAMBRIDGE).
  • Terms commonly used as shorthand or truncated references or nicknames for a place are as primarily geographically descriptive (or misdescriptive) of a place as are the full place names.
    • In re South Park Cigar, Inc., Serial No. 78486382, (TTAB 2007)
      • Applicant argues, to the contrary, that even if Ybor City is a generally known geographic location, applicant's mark includes only the word YBOR, not the words YBOR CITY. We are not persuaded. It is settled that terms commonly used as shorthand or truncated references or nicknames for a place are as primarily geographically descriptive (or misdescriptive) of a place as are the full place names. See United States Playing Card Company v. Harbro, LLC, supra (VEGAS recognized as shorthand reference to Las Vegas, Nevada, and thus is a primarily geographic term); In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998)(CAROLINA recognized as shorthand reference to either North or South Carolina, and thus is a primarily geographic term).
  • Applicant's "intent" in adopting its mark is not relevant or probative of the issue of whether consumers will regard the term as a primarily geographic term.
    • In re South Park Cigar, Inc., Serial No. 78486382, (TTAB 2007)
      • In its response to the first Office action, applicant asserted that "Applicant chose ‘YBOR' as part of its mark because of the man, Vicente Martinez Ybor, for whom the ‘Ybor City' section of Tampa, Florida, was named." This assertion or argument has not been mentioned in either applicant's main appeal brief or its reply brief. In the interest of completeness, however, we shall discuss the issue. First, applicant's "intent" in adopting its mark is not relevant or probative of the issue at hand, i.e., whether consumers will regard YBOR as a primarily geographic term. See, e.g., In re House of Windsor, Inc., 221 USPQ 53, 56 (TTAB 1983).
  • Under the first prong of the test – whether the mark's primary significance is a generally known geographic location – a composite mark must be evaluated as a whole. It is not erroneous for the examiner to consider the significance of each element within the composite mark in the course of evaluation the mark as a whole.
    • In re South Park Cigar, Inc., Serial No. 78486382, (TTAB 2007)
      • Finally, there is another issue pertaining to the first element of the Section 2(e)(3) refusal that was never raised or argued by applicant but which we find necessary to determine, again in the interest of completeness. It is settled that "[u]nder the first prong of the test – whether the mark's primary significance is a generally known geographic location – a composite mark such as the applicant's proposed mark must be evaluated as a whole. ... It is not erroneous, however, for the examiner to consider the significance of each element within the composite mark in the course of evaluation the mark as a whole." California Innovations, supra, 329 F.3d at 1342, 66 USPQ2d at 1858, quoting from In re Save Venice New York, Inc., 259 F.3d 1346, 1352, 59 USPQ2d 1778, 1782 (Fed. Cir. 2001). See also In re Les Halles De Paris J.V., supra.
    • In re South Park Cigar, Inc., Serial No. 78486382, (TTAB 2007)
      • We cannot conclude that applicant's mere addition of the word GOLD to the geographic designation YBOR results in an arbitrary, fanciful or suggestive composite. Distinguish In re Sharky's Dry Goods Co., 23 USPQ2d 1061 (TTAB 1992)(PARIS BEACH CLUB for tshirts and sweatshirts held not deceptive under Section 2(a), due to incongruity of elements of mark).
  • The second element of the Section 2(e)(3) refusal involves two issues. The first is whether there is a goods/place association, and second, whether or not applicant's goods in fact come from the place named.
    • In re South Park Cigar, Inc., Serial No. 78486382, (TTAB 2007)
      • We turn next to the second element of the Section 2(e)(3) refusal, i.e., whether "the consuming public is likely to believe the place identified by the mark indicates the origin of the goods bearing the mark, when in fact the goods do not come from that place." California Innovations, supra, 329 F.3d at 1341, 66 USPQ2d at 1858. This element involves two issues. The first is whether there is a goods/place association, and second, whether or not applicant's goods in fact come from the place named. We shall begin with the second of these issues.
  • In a case involving goods, the goods-place association often requires little more than a showing that the consumer identifies the place as a known source of the product. Thus, to make a goods-place association, the case law permits an inference that the consumer associates the product with the geographic location in the mark because that place is known for producing the product.
    • In re South Park Cigar, Inc., Serial No. 78486382, (TTAB 2007)
      • We turn next to the first prong of the second element, i.e., whether there is a goods/place association between the "cigars" identified in applicant's application and the place named in the mark, Ybor City. On this issue, the Federal Circuit has stated:
        "In a case involving goods, the goods-place association often requires little more than a showing that the consumer identifies the place as a known source of the product. ... Thus, to make a goods-place association, the case law permits an inference that the consumer associates the product with the geographic location in the mark because that place is known for producing the product." In re Les Halles De Paris, supra, 334 F.3d at 1373-74, 67 USPQ2d at 1541 (internal citations omitted).
  • The materiality element may be established by evidence showing that the place named in the mark is famous as a source of the goods at issue.
    • In re South Park Cigar, Inc., Serial No. 78486382, (TTAB 2007)
      • The third and final element of the Section 2(e)(3) refusal requires us to determine whether the association between Ybor City and applicant's cigars which is evoked (falsely) by applicant's YBOR GOLD mark would materially affect the relevant public's decision to purchase applicant's goods. The materiality element may be established by evidence showing that the place named in the mark is "famous as a source of the goods at issue." In re Les Halles De Paris, J.V., supra, 334 F.3d at 1374, 67 USPQ2d 1542, citing California Innovations, supra, which itself cites House of Windsor, supra.
  • The materiality element may be established by a showing that the goods in question are "a principal product" of the place named in the mark, that the place is "noted for" or "renowned for" such goods, or that the goods are, or are related to, the "traditional" products of the place named in the mark.
    • In re South Park Cigar, Inc., Serial No. 78486382, (TTAB 2007)
      • In California Innovations, the court, citing its prior case law, likewise stated that the materiality element may be established by a showing that the goods in question are "a principal product" of the place named in the mark, that the place is "noted for" or "renowned for" such goods, or that the goods are, or are related to, the "traditional" products of the place named in the mark. California Innovations, supra, 329 F.3d at 1341, 66 USPQ2d at 1857, citing, variously, In re Save Venice New York, supra; In re Wada, supra, In re Loew's Theaters, supra, and In re House of Windsor, supra.
  • The same test applies to determining the alternative question of whether a mark is primarily geographically deceptively misdescriptive, under Section 2(e)(3), with the additional requirement that purchasers mistakenly believe that the goods or services originate in, or are connected with, the geographic place named.
    • In re Jose Ignacio Guisado Urbano, Serial No. 74/441,447, (TTAB 1999)
      • The same test applies to determining the alternative question of whether a mark is primarily geographically deceptively misdescriptive, under Section 2(e)(3), with the additional requirement that purchasers mistakenly believe that the goods or services originate in, or are connected with, the geographic place named.10

        FOOTNOTE 10 "The amendments to Section 2 of the Trademark Act of 1946 made by Public Law 103-183, 107 Stat. 2057, The North American Free Trade Enactment Act, apply to applications filed on or after December 8, 1993. While this application was filed before the effective date of the amendments, we note that prior to these amendments, the prohibitions against registration on the grounds that a mark is primarily geographically descriptive or that a mark is primarily geographically deceptively misdescriptive were contained in Section 2(e)(2) of the Act. Under the law as amended, the prohibition against registration on the ground that a mark is primarily geographically deceptively misdescriptive is contained in Section 2(e)(3) of the Act. The legal standard for determining this issue remains the same, although marks found to be primarily geographically deceptively misdescriptive under the amended provisions are not eligible for registration under the provisions of Section 2(f) of the Act, subject to certain grandfather provisions which do not appear to be applicable in this case. Similarly, while a disclaimer of a primarily geographically descriptive element of a mark remains permissible under the amended provisions, disclaimer will not overcome a refusal under Section 2(e)(3) on the ground that the subject term is primarily geographically deceptively misdescriptive. See, In re Hiromichi Wada, 48 USPQ2d 1689, 1691 (TTAB 1998)."

  • Refusal to register marks under 2(a), 2(e)(2), and 2(e)(3).
    • United States Playing Card Company v. Harbro, LLC, Opposition No. 91162078, (TTAB 2006).
      • As applied to geographic marks, Section 2 of the Lanham Act provides the following: 1. If the geographic term is deceptive under Section 2(a), the term may not be registered under any circumstances; 2. If the geographic term is "primarily geographically descriptive" under Section 2(e)(2), the term may be registered on the Supplemental Register or upon a showing of acquired distinctiveness; or, 3. If the geographic term is "primarily geographically deceptively misdescriptive" under Section 2(e)(3), the term may not be registered under any circumstances. 5
  • If a primarily geographically deceptively misdescriptive mark has been in lawful use in commerce since before December 8, 1993 (the date of enactment of the NAFTA Implementation Act), it may be registered on the Supplemental Register or it may be registered on the Principal Register under the provisions of Section 2(f) upon a showing of acquired distinctiveness.
    • United States Playing Card Company v. Harbro, LLC, Opposition No. 91162078, (TTAB 2006).
      • FOOTNOTE 5 "There is an exception. If a primarily geographically deceptively misdescriptive mark has been in lawful use in commerce since before December 8, 1993 (the date of enactment of the NAFTA Implementation Act), it may be registered on the Supplemental Register or it may be registered on the Principal Register under the provisions of Section 2(f) upon a showing of acquired distinctiveness."
  • The test for determining whether a mark is geographically deceptive under Section 2(a) is the same as determining whether a mark is primarily geographically deceptively misdescriptive under Section 2(e)(3).
    • United States Playing Card Company v. Harbro, LLC, Opposition No. 91162078, (TTAB 2006).
      • With respect to the interplay between Section 2(a) and Section 2(e)(3), the Court of Appeals for the Federal Circuit held that the test for determining whether a mark is geographically deceptive under Section 2(a) is the same as determining whether a mark is primarily geographically deceptively misdescriptive under Section 2(e)(3). In re California Innovations Inc., 329 F.3d 1334, 66 USPQ2d 1853, 1856 (Fed. Cir. 2003).
  • That the analysis for primarily geographically deceptively misdescriptive marks focuses on the deception of, or fraud on, the consumer, and, therefore, requires a showing of public deception (i.e., that consumers have been misled).
    • United States Playing Card Company v. Harbro, LLC, Opposition No. 91162078, (TTAB 2006).
      • The Court explained that the analysis for primarily geographically deceptively misdescriptive marks focuses on the deception of, or fraud on, the consumer, and, therefore, requires a showing of public deception (i.e., that consumers have been misled). Id.
  • To ensure a showing of deceptiveness, it must be proven that the goods/place association made by the consumer is material to the consumer's decision to purchase the goods
    • United States Playing Card Company v. Harbro, LLC, Opposition No. 91162078, (TTAB 2006).
      • To ensure a showing of deceptiveness, a plaintiff (or the Patent and Trademark Office) must prove that the goodsplace association made by the consumer is material to the consumer's decision to purchase the goods. Id. at 1857- 1858.
  • The addition of a materiality inquiry equates this test with the elevated standard applied under §1052(a).
    • United States Playing Card Company v. Harbro, LLC, Opposition No. 91162078, (TTAB 2006).
      • "The addition of a materiality inquiry equates this test with the elevated standard applied under §1052(a)." Id.
  • Because the same legal standard applies to both sections 2(a) and 2(e)(3) of the Lanham Act, the Court instructed the Patent and Trademark Office to address the deceptiveness of a geographic term under the ambit of Section 2(e)(3) rather than Section 2(a).
    • United States Playing Card Company v. Harbro, LLC, Opposition No. 91162078, (TTAB 2006).
      • Because the same legal standard applies to both sections 2(a) and 2(e)(3) of the Lanham Act, the Court instructed the Patent and Trademark Office to address the deceptiveness of a geographic term under the ambit of Section 2(e)(3) rather than Section 2(a). Id. at 66 USPQ2d 1858. Accordingly, we analyze whether the mark VEGAS for playing cards is primarily geographically deceptively misdescriptive under Section 2(e)(3).
  • The distinction between a mark that is primarily geographically descriptive or primarily geographically deceptively misdescriptive is whether the geographic origin of the goods is in the place named in the mark.
    • United States Playing Card Company v. Harbro, LLC, Opposition No. 91162078, (TTAB 2006).
      • The distinction between a mark that is primarily geographically descriptive or primarily geographically deceptively misdescriptive is whether the geographic origin of the goods is in the place named in the mark. In re Jacques Bernier Inc., 894 F.2d 394, 13 USPQ2d 1725, 1726 (Fed. Cir. 1990).
  • To raise an inference of materiality, opposer must show a "heightened" association between the goods and the geographic location.
    • United States Playing Card Company v. Harbro, LLC, Opposition No. 91162078, (TTAB 2006).
      • We decline to draw an inference that the geographic misrepresentation is a material factor in the purchasing decision. First, as indicated in the previous paragraph, the evidence shows that consumers purchase canceled casino playing cards because they were used in casinos, not because they were made or used in Las Vegas. Second, to raise an inference of materiality, opposer must show a "heightened" association between the goods and the geographic location. In re Les Halles De Paris J.V., 67 USPQ2d at 1542 (the Patent and Trademark Office may raise an inference of materiality with evidence that the place is famous as a source of the goods at issue).6

        FOOTNOTE 6 "But see, In re California Innovations Inc., 66 USPQ2d at 1857 (while the goods-place association may raise an inference of deception, a mere inference is not enough to establish whether the misrepresentation was a material factor in the consumer's decision)."

  • Where applicant's mark contains more words than just the geographic location, the primary significance of the marks may nevertheless be geographic.
    • In re Boyd Gaming Corporation, Serial No. 75/541,256, (TTAB 2000).
      • While applicant's asserted marks contain more words than the geographic location "Havana," we agree with the Examining Attorney that the primary significance of the marks is geographic. See Wada, supra, and In re Bacardi & Co. Ltd., 48 USPQ2d 1031, 1033 (TTAB 1997)(HAVANA SELECT, HAVANA CLASICO, OLD HAVANA, HAVANA PRIMO and HAVANA CLIPPER for rum held unregistrable under Section 2(e)(3)).
    • In re Boyd Gaming Corporation, Serial No. 75/541,256, (TTAB 2000).
      • We do not believe that the additional wording in applicant's marks detracts from the geographic meaning.
  • Where applicant's description of goods contains no limitation as to the channels of trade in which its goods will be sold, it must be assumed that applicant's goods will be sold in all reasonable channels of trade.
    • In re Boyd Gaming Corporation, Serial No. 75/541,256, (TTAB 2000).
      • Further, it is our belief that purchasers seeing applicant's goods in applicant's resort hotel and casino as well as, possibly, in retail stores in this country,5 will believe that those goods either emanate from or are authorized, sponsored or licensed by a resort casino bearing that name in Havana, Cuba, even though it is apparently not the name of an actual resort in Havana. In this regard, the evidence submitted by the Examining Attorney sufficiently establishes a goods/place association between wearing apparel and cosmetics and the city of Havana, a major metropolitan city. See for example, Nantucket, supra, Nies J., concurring, 213 USPQ at 895-96 (by way of illustration, CHICAGO for shirts would be protectable only upon the establishment of secondary meaning).

        FOOTNOTE 5 "Applicant's description of goods contains no limitation as to the channels of trade in which its goods will be sold. Accordingly, we must consider that applicant's goods will be sold in all reasonable channels of trade, including retail stores which may carry this merchandise. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat'l Ass'n, 811 F.2d 1490, 1493, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987)."

  • To the extent that applicant is arguing that potential purchasers will associate applicant's goods and services presumably on the basis of acquired distinctiveness, registrability pursuant to Section 2(f) is not available to marks which are primarily geographically deceptively misdescriptive unless they became distinctive of those goods in commerce before the date of enactment of NAFTA (December 8, 1993).
    • In re Boyd Gaming Corporation, Serial No. 75/541,256, (TTAB 2000).
      • With respect to applicant's argument concerning the alleged significance of applicant's marks suggesting an association with 1950's pre-Castro Cuba, we believe what the Board stated in the Bacardi case, at 1034, is applicable here: "[A]pplicant has submitted absolutely no evidence to establish in this record that the relevant purchasers would make such an association. Further, even if applicant had established an association between HAVANA and a particular lifestyle, such association would not contradict the primary geographic significance of the term, as the association may be made precisely because of the primary significance of HAVANA as a city in Cuba." See also Wada, 52 USPQ2d at 1540-41.
    • In re Boyd Gaming Corporation, Serial No. 75/541,256, (TTAB 2000).
      • To the extent that applicant is arguing that potential purchasers will associate applicant's goods with its resort hotel and casino, which apparently does not yet exist, presumably on the basis of acquired distinctiveness, suffice it to say that registrability pursuant to Section 2(f) is not available to marks which are primarily geographically deceptively misdescriptive unless they became distinctive of those goods in commerce before the date of enactment of the North American Free Trade Agreement Implementation Act (December 8, 1993). See Fred Hayman Beverly Hills Inc. v. Jacques Bernier Inc., 38 USPQ2d 1691, 1692 (TTAB 1996).
  • Section 20 of the Trademark Act gives the Board authority to decide appeals from adverse final decisions of Examining Attorneys and that this duty may not and should not be delegated by adoption of conclusions reached by Examining Attorneys in different cases on different records.
    • In re Boyd Gaming Corporation, Serial No. 75/541,256, (TTAB 2000).
      • In the BankAmerica case, we noted that Section 20 of the Trademark Act gives the Board authority to decide appeals from adverse final decisions of Examining Attorneys and that this duty may not and should not be delegated by adoption of conclusions reached by Examining Attorneys in different cases on different records.
    • In re Boyd Gaming Corporation, Serial No. 75/541,256, (TTAB 2000).
      • Nor should the fact that the Examining Attorney may have allowed applicant's service mark applications for casino resort services have persuasive effect here.
  • If these two prongs are satisfied, and if, as in the present case, the applicant's goods and services do not in fact originate from the place named in the mark, refusal under Section 2(e)(3) is proper.
    • In re Narada Productions, Inc., Serial No. 75/460,277, (TTAB 2001).
      • If these two prongs are satisfied, and if, as in the present case, the applicant's goods and services do not in fact originate from the place named in the mark, refusal under Section 2(e)(3) is proper. See In re Loew's Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985).
  • Where a mark consists of the combination of two distinct geographic locations, purchasers may nevertheless understand applicant's mark to be referring to the two places named in the mark, rather than a mythical location.
    • In re Narada Productions, Inc., Serial No. 75/460,277, (TTAB 2001).
      • We are not persuaded by applicant's argument that because CUBA L.A. is not the name of an actual geographic place, the primary significance of the mark cannot be geographic under the first prong of the Section 2(e)(3) test. As in the London & Edinburgh case, we find that purchasers would understand applicant's mark to be referring to the two places named in the mark, rather than to some mythical place called "Cuba L.A."
    • In re Narada Productions, Inc., Serial No. 75/460,277, (TTAB 2001).
      • In sum, we find that the primary significance of applicant's mark CUBA L.A. is geographic. The mark is composed of the names of two well-known geographic locations which are neither obscure nor remote.
    • In re Narada Productions, Inc., Serial No. 75/460,277, (TTAB 2001).
      • The mere combination of those two names into the composite CUBA L.A. does not detract from the primarily geographic significance of each of the place names nor from the primarily geographic significance of the mark as a whole.
  • Punctuation, such as an ampersand, does not detract from a finding that the terms are geographic in nature.
    • In re Narada Productions, Inc., Serial No. 75/460,277, (TTAB 2001).
      • Nor are we persuaded that the absence of an ampersand in applicant's mark is of any legal consequence; the Board's finding in London & Edinburgh did not rest on the existence of the ampersand in the LONDON & EDINBURGH mark.
  • Unless the combination of locations is so arbitrary, incongruous and random that the primarily geographic significance of the mark as a whole is negated, the combined mark can be found as geographic under the first prong of Section 2(e)(3).
    • In re Narada Productions, Inc., Serial No. 75/460,277, (TTAB 2001).
      • Likewise, we are not persuaded by applicant's argument that CUBA L.A., like the "Borneo & Bulgaria" hypothetical set out by the Board in London & Edinburgh, is a combination of locations which is so arbitrary, incongruous and random that the primarily geographic significance of the mark as a whole is negated. It is true that Cuba and L.A. do not share between themselves the same sort of geographical proximity and governmental connections as those which the Board cited in support of its finding that purchasers of insurance services would make a "natural association" between London and Edinburgh. However, we cannot conclude that Cuba and L.A., in terms of their relationship to each other and to applicant's identified goods and services, are as disparate and unrelated as Borneo and Bulgaria are, or that the association between Cuba and L.A. is as fanciful and random as an association between Borneo and Bulgaria would be.
    • In re Narada Productions, Inc., Serial No. 75/460,277, (TTAB 2001).
      • Rather, we find that the primary significance of CUBA L.A., when used as a mark in connection with applicant's musical goods and services, would be that the goods and services are rendered in or originate from both of the locations identified in the mark. That is, purchasers could reasonably assume from the mark that, for example, applicant's goods and services involve music from Cuba which is performed, recorded or distributed in and/or from L.A., or that the goods and services involve musicians from Cuba who perform in, or are based in, L.A. Thus, purchasers would not necessarily perceive anything incongruous or fanciful in the combining of "Cuba" with "L.A." in a mark for such goods and services, and the mark's combination of these two place names does not detract from the primarily geographic significance of the mark as a whole. CUBA L.A., for applicant's goods and services, is more akin to LONDON & EDINBURGH for insurance services than it is to a truly random combination like "Borneo & Bulgaria."
  • A mark is not primarily geographic where the geographic meaning is obscure, minor, remote, or not likely to be connected with the goods.
    • In re Broyhill Furniture Industries, Inc., Serial No. 75/473,959, (TTAB 2001).
      • However, "[a] mark is not primarily geographic where the geographic meaning is obscure, minor, remote, or not likely to be connected with the goods." In re Wada, supra, citing In re Nantucket, Inc., supra at 892.
  • Fame or recognition that a geographic location is known for the particular goods is not a requirement in order for consumers to mistakenly believe that a goods/place association exists.
    • In re Broyhill Furniture Industries, Inc., Serial No. 75/473,959, (TTAB 2001).
      • The fact, furthermore, that the record shows that Tuscany was the center for Renaissance art, literature, history and culture does not detract from the primary significance of the mark "TOSCANA" as designating the geographical locality where such activity occurred. See, e.g., In re Save Venice New York, Inc., supra at 4 and In re Jack's Hi-Grade Foods, Inc., 226 USPQ 1028, 1029 (TTAB 1985).
    • In re Broyhill Furniture Industries, Inc., Serial No. 75/473,959, (TTAB 2001).
      • In particular, Tuscany has been shown to be a sizeable region which produces a wide variety of products, including furniture. While Tuscany is apparently not famous or otherwise noted for its furniture, such is not a requirement in order for consumers to mistakenly believe that a goods/place association exists. See, e.g., In re Jack's Hi-Grade Foods, Inc., supra at 1030.
  • Because consumers may assume that geographic regions, like other commercial actors, are likely to expand from their traditional goods or services into related goods or services, the TTAB holds that the registrability of a geographic mark may be measured against the public's association of that region with both its traditional goods and any related goods or services that the public is likely to believe originate there.
    • In re Broyhill Furniture Industries, Inc., Serial No. 75/473,959, (TTAB 2001).
      • Applicant's mere argument that "[p]urchasers of fine furniture are sophisticated and very discriminating because of the nature of goods," which are often expensive and selected "with the personal assistance and advice of an experienced salesperson," does not negate the demonstrated fact that consumers would regard the term "TOSCANA" as geographical and would simply assume that the furniture they are interested in purchasing is made in or otherwise has its origin in the Tuscany region of Italy, when in fact such is not the case. See, e.g., In re Save Venice New York, Inc., supra at 5 ["from the consumer's perspective, we ... find no reason to believe that the public strictly limits its association of a place to the geographic region's traditional products or services"; instead, "[b]ecause ... consumers may assume that geographic regions, like other commercial actors, are likely to expand from their traditional goods or services into related goods or services, we hold that the registrability of a geographic mark may be measured against the public's association of that region with both its traditional goods and any related goods or services that the public is likely to believe originate there"].
  • Since §1052 no longer treats geographically deceptively misdescriptive marks differently from geographically deceptive marks; the test for rejecting a deceptively misdescriptive mark is no longer simple lack of distinctiveness, but the higher showing of deceptiveness.
    • In re Consolidated Specialty Restaurants, Inc., Serial No. 75857797, (TTAB 2004).
      • The Court in In re California Innovations, Inc., supra, concluded that the standard for determining whether a mark is primarily geographically deceptively misdescriptive under the new Section 2(e)(3) of the Act is different from, and more rigorous than, the standard for determining registrability of the same types of marks under Section 2(e)(2) of the Act prior to the NAFTA amendment. The Court stated the following (66 USPQ2d at 1856): "Thus, §1052 no longer treats geographically deceptively misdescriptive marks differently from geographically deceptive marks. … Accordingly, the test for rejecting a deceptively misdescriptive mark is no longer simple lack of distinctiveness, but the higher showing of deceptiveness."
  • The application of the test for primarily geographically deceptively misdescriptive marks in the context of services.
    • In re Consolidated Specialty Restaurants, Inc., Serial No. 75857797, (TTAB 2004).
      • In a subsequent case, In re Les Halles De Paris J.V., 334 F.3d 1371, 67 USPQ2d 1539 (Fed. Cir. 2003), the Court discussed the application of the test for primarily geographically deceptively misdescriptive marks in the context of services instead of goods, stating (67 USPQ2d at 1541): "Although the services-place association operates somewhat differently than a goods-place association, the second prong nonetheless continues to operate as part of the test for Section 2(e)(3). … In the case of a services-place association, however, a mere showing that the geographic location in the mark is known for performing the service is not sufficient. Rather, the second prong of the test requires some additional reason for the consumer to associate the services with the geographic location invoked by the mark. … Thus, a services-place association in a case dealing with restaurant services, such as the present case, requires a showing that the patrons of the restaurant are likely to believe the restaurant services have their origin in the location indicated by the mark. In other words, to refuse registration under Section 2(e)(3), the PTO must show that patrons will likely be misled to make some meaningful connection between the restaurant (the service) and the relevant place. For example, the PTO might find a services-place association if the record shows that patrons, though sitting in New York, would believe the food served by the restaurant was imported from Paris,…, or some other heightened association between the services and the relevant place. …[T]his court only identifies some potential showings that might give restaurant patrons an additional reason beyond the mark itself to identify the services as originating in the relevant place."
    • In re Consolidated Specialty Restaurants, Inc., Serial No. 75857797, (TTAB 2004).
      • Finally, the Court explained the third prong of the test in the context of services as follows (67 USPQ2d at 1542): "Beyond the second prong, however, the misleading services-place association must be a material factor in the consumer's decision to patronize the restaurant. … To raise an inference of deception or materiality for a service mark, the PTO must show some heightened association between the services and the relevant geographic denotation. … In other words, an inference of materiality arises in the event of a very strong servicesplace association. Without a particularly strong services-place association, an inference would not arise, leaving the PTO to seek direct evidence of materiality. In any event, the record might show that customers would patronize the restaurant because they believed the food was imported from, or the chef was trained in, the place identified by the restaurant's mark."
  • The addition of either generic words or a design feature do not detract from the primary geographical significance of the mark.
    • In re Consolidated Specialty Restaurants, Inc., Serial No. 75857797, (TTAB 2004).
      • Applicant acknowledges that "Colorado" is the geographic place identified by its mark (e.g., applicant's substitute brief, pp. 3 and 5), and applicant does not argue that the first prong of the test has not been met. There is simply no doubt that the geographical significance of the term "COLORADO" is its primary significance, and it is neither remote nor obscure in the context of consumer awareness. Neither the addition of the generic word "steakhouse" nor the addition of the design feature (including a mountain) detracts from the primary geographical significance of the mark. See In re U.S. Cargo Inc., 49 USPQ2d 1702, 1704 (TTAB 1998); In re Bacardi & Co. Ltd., 48 USPQ2d 1031, 1034 (TTAB 1997, released 1998); and In re Carolina Apparel, 48 USPQ2d 1542, 1543 (TTAB 1998). If anything, the mountain design in applicant's mark adds to the geographical significance relating to Colorado.
  • An inference of materiality arises where there is a showing of a "heightened association" between the services and the geographic place or, in other words, a showing of "a very strong services-place association."
    • In re Consolidated Specialty Restaurants, Inc., Serial No. 75857797, (TTAB 2004).
      • Also clear from the Court's guidance in the California Innovations and the Les Halles cases, supra, is that the misleading services/place association must be a material factor in the customer's decision to patronize applicant's restaurant. In the Les Halles case, the Court explained that an inference of materiality arises where there is a showing of a "heightened association" between the services and the geographic place or, in other words, a showing of "a very strong services-place association."
    • In re Consolidated Specialty Restaurants, Inc., Serial No. 75857797, (TTAB 2004).
      • In the Les Halles case, the Court explained that an inference of materiality arises where there is a showing of a "heightened association" between the services and the geographic place or, in other words, a showing of "a very strong services-place association." In this case, a very strong services-place association has been shown. The evidence discussed above clearly establishes that Colorado is known for its steaks and that the public is aware of the connection of Colorado with high quality steak (or beef).
  • Evidence: Third-party applications and cancelled registrations, which together constitute a significant portion of the records submitted by applicant, have no probative value on the issue of registrability.
    • In re Spirits of New Merced, LLC, Serial No. 78710805, (TTAB 2007)
      • None of this evidence serves to establish that the primary meaning of YOSEMITE is not geographical. To begin with, the third-party applications and cancelled registrations, which together constitute a significant portion of the records submitted by applicant, have no probative value on the issue of registrability. They are evidence only of the fact that the application or registration was filed on a certain date.
  • Evidence: Web pages, books, articles, and brochures, are examples of highly relevant evidence as to whether a term is a generally known geographic location.
    • In re South Park Cigar, Inc., Serial No. 78486382, (TTAB 2007)
      • Based on the evidence of record, we find, first, that "Ybor City" is the name of a generally known geographic place, i.e., a specific neighborhood or area located in Tampa, Florida. As noted above, "Ybor City" is listed and has an entry on the "placesnamed" website, and on the Yahoo maps website. It is listed on the website of the city of Tampa as one of the recognized neighborhoods in the city. It has its own listings or entries in the travel guides Frommer's and Fodor's. Information about Ybor City is included on the website of the Ybor Times, as well as on the website of the Ybor City Chamber of Commerce. Numerous references to Ybor City are found in the NEXIS evidence submitted by the Trademark Examining Attorney. This type of evidence is highly relevant to the issue of whether Ybor City is a generally known geographic location. See, e.g., In re Les Halles De Paris J.V., 334 F.3d 1371, 67 USPQ2d 1539 (Fed. Cir. 2003)(noting that examiner's evidence included "articles and travel brochures about the Jewish quarter or neighborhood in Paris known as Le Marais").
  • Evidence: The USPTO might establish this "very strong services-place association" by showing that customers would patronize the restaurant because they believed the food came from the place named.
    • In re Consolidated Specialty Restaurants, Inc., Serial No. 75857797, (TTAB 2004).
      • Again, the Court included in its non-exhaustive list of examples of how the USPTO might establish this "very strong services-place association" a showing that customers would patronize the restaurant because they believed the food came from the place named. In re Les Halles, supra.
  • Evidence: With respect to the third-party registrations of a number of geographic names, each application for registration of a mark for particular goods or services must be separately evaluated.
    • In re Boyd Gaming Corporation, Serial No. 75/541,256, (TTAB 2000).
      • With respect to the third-party registrations of a number of geographic names, each application for registration of a mark for particular goods or services must be separately evaluated. See In re BankAmerica Corporation, 231 USPQ 873, 876 (TTAB 1986) and cases cited therein.
  • Evidence: Third-party registrations are not evidence that the marks which are the subjects thereof are in use and that the relevant purchasing public is familiar therewith.
    • In re Broyhill Furniture Industries, Inc., Serial No. 75/473,959, (TTAB 2001).
      • There is no evidence, however, which substantiates applicant's assertions. The third-party registrations upon which it relies are not evidence that the marks which are the subjects thereof are in use and that the relevant purchasing public is familiar therewith. See, e.g., AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973); In re Hub Distributing, Inc., 218 USPQ 284, 285 (TTAB 1983); and National Aeronautics & Space Administration v. Record Chemical Co., Inc., 185 USPQ 563, 567 (TTAB 1975).
  • Evidence: Each case must be determined on its own merits and there is nothing in this record to indicate the reasons for the allowance of the third-party registrations upon which applicant relies.
    • In re Broyhill Furniture Industries, Inc., Serial No. 75/473,959, (TTAB 2001).
      • Each case, moreover, must in any event be determined on its own merits and there is nothing in this record to indicate the reasons for the allowance of the third-party registrations upon which applicant relies. See, e.g., In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) ["Even if some prior registrations had some characteristics similar to [applicant's] application, the PTO's allowance of such prior registrations does not bind the Board"] and In re Pennzoil Products Co., 20 USQP2d 1753, 1758 (TTAB 1991).
  • Evidence: Examples of how the USPTO might establish the heightened services/place association, a showing that patrons would believe the food served by the restaurant was from the place named in the mark.
    • In re Consolidated Specialty Restaurants, Inc., Serial No. 75857797, (TTAB 2004).
      • In In re Les Halles, supra, the Court of Appeals for the Federal Circuit included in its non-exhaustive list of examples of how the USPTO might establish the heightened services/place association, a showing that patrons would believe the food served by the restaurant was from the place named in the mark. That is precisely what the Examining Attorney has established herein. See also, In re Save Venice New York Inc., 259 F.3d 1346, 59 USPQ2d 1778 (Fed. Cir. 2001).
    • In re Consolidated Specialty Restaurants, Inc., Serial No. 75857797, (TTAB 2004).
      • The Examining Attorney's evidence shows that steaks from Colorado are served in other locations, such that out-of-state consumers would reasonably believe a "Colorado Steakhouse" served Colorado beef, regardless of the restaurant's location.
  • Analysis of how the USPTO has treated marks with geographic terms Pre- and Post-NAFTA.
    • In re Beaverton Foods, Inc., Serial No. 76624790, (TTAB 2007)
      • It is applicant's position that the following highlighted provision in Section 2(f) of the Trademark Act precludes the application of any ground in Section 2 to refuse registration of a mark which qualifies for registration under the provision of Subsection 2(f)..."Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant's goods in commerce before the date of enactment of the North American Free Trade Agreement Implementation Act."
    • In re Beaverton Foods, Inc., Serial No. 76624790, (TTAB 2007)
      • We begin our analysis with a brief review of how the USPTO has treated marks with geographic terms. Prior to the implementation of NAFTA, with the consequent amendment of the Lanham Act to place the refusal of primarily geographically deceptively misdescriptive marks in Section 2(e)(3), rather than in Section 2(e)(2) along with primarily geographically descriptive marks, the USPTO recognized three categories of geographic marks: 1) primarily geographically descriptive, 2) primarily geographically deceptively misdescriptive, and 3) geographically deceptive. Marks falling in the first two categories were refused registration under section 2(e)(2) but were registrable upon a showing of acquired distinctiveness under Section 2(f). The test for determining whether a mark was primarily geographically descriptive or primarily geographically deceptively misdescriptive consisted of the following elements: the primary significance of the mark is a generally known geographic location; the goods or services do (for geographically descriptive marks) or do not (for geographically deceptively misdescriptive marks) originate in the place identified in the mark; and purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark. See In re California Pizza Kitchen Inc., 10 USPQ2d 1704, 1705 (TTAB 1988), citing In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450, 1452 (Fed. Cir. 1987) (primarily geographically descriptive); and In re Loew's Theatres, Inc., 769 F.2d 764, 226 USPQ 865, 867 (Fed. Cir. 1985) (primarily geographically deceptively misdescriptive). Marks falling in the geographically deceptive category were refused registration under Section 2(a) and were unregistrable, i.e., such marks were not eligible for registration under Section 2(f). The test for determining geographically deceptive marks mirrored the test for primarily geographically deceptively misdescriptive marks with the addition of the following element: the geographic misrepresentation is a material factor in the consumer's decision to buy the goods or use the services. See Institut National des Appellations D'Origine v. Vintners International Co. Inc., 958 F.2d 1574, 22 USPQ2d 1190, 1195 (Fed. Cir. 1992). See also In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694 (TTAB 1992). Thus, the test under Section 2(a) had the added element of materiality.
    • In re Beaverton Foods, Inc., Serial No. 76624790, (TTAB 2007)
      • The NAFTA amendments assigned the same Section 2(a) proscription to registration of geographically deceptive marks to primarily geographically deceptively misdescriptive marks under Section 2(e)(3) and, thus, eliminated the ability of a primarily geographically deceptively misdescriptive mark to qualify for registration under Section 2(f). The Court, in California Innovations, recognizing the serious implications for a primarily geographically deceptively misdescriptive term, incorporated the test previously used under Section 2(a) into the test used under the newly created Section 2(e)(3) and included the materiality component for a refusal under Section 2(e)(3), making it more difficult for a mark to be refused registration on the basis that it is a primarily geographically deceptively misdescriptive term.2

        FOOTNOTE 2 "By imposing the more rigorous test with its element of materiality, the Court has made fewer marks subject to a refusal under Section 2(e)(3) and thus, not only will there be fewer marks which otherwise would need to resort to the grandfather provision of Section 2(f) in order to be registrable, but more marks will be registrable simply because Section 2(e)(3) will be inapplicable. Those marks in which the geographic misdescriptiveness is not material to the purchasing decision, that prior to the NAFTA amendments would have been regarded as primarily geographically deceptively misdescriptive and thus would have required a showing of acquired distinctiveness for registration on the Principal Register, now no longer require such a showing in order to be registrable. If the materiality element cannot be supported, then a mark which otherwise would be primarily geographically deceptively misdescriptive is registrable on the Principal Register."

    • In re South Park Cigar, Inc., Serial No. 78486382, (TTAB 2007)
      • The addition of a materiality element to the Section 2(e)(3) test is "due to the NAFTA changes in the Lanham Act." Id. The materiality showing now required in both the Section 2(a) and Section 2(e)(3) refusals "equates this test [under Section 2(e)(3)] with the elevated standard applied under §1052(a)." Id., 329 F.3d at 1340, 66 USPQ2d at 1857. However, the court went on to state that "geographic deception is specifically dealt with in subsection (e)(3), while deception in general continues to be addressed under subsection (a). Consequently, this court anticipates that the PTO will usually address geographically deceptive marks under subsection (e)(3) of the amended Lanham Act rather than subsection (a). While there are identical legal standards for deception in each section, subsection (e)(3) specifically involves deception involving geographic marks." Id., 329 F.3d at 1341-42, 66 USPQ2d at 1858.
    • In re South Park Cigar, Inc., Serial No. 78486382, (TTAB 2007)
      • Thus, in keeping with the Court's instructions and its construction of the statute, we deem the appropriate refusal in this case involving an allegedly geographically deceptive mark to be only the Section 2(e)(3) "primarily geographically deceptively misdescriptive" refusal, and not the Section 2(a) deceptiveness refusal.3 See United States Playing Card Company v. Harbro, LLC, ___ USPQ2d ___, Opposition No. 91162078 (TTAB, December 14, 2006). FOOTNOTE 3 "In TMEP section 1210.05(a), it is stated that:
        "...because the statute expressly prohibits registration of deceptive marks on the Supplemental Register or on the Principal Register under §2(f), the examining attorney will initially refuse registration of geographically deceptive marks under both §§2(a) and 2(e)(3). If the applicant alleges use in commerce prior to December 8, 1993 and amends to the Supplemental Register, or establishes that the proposed mark acquired distinctiveness under §2(f) before December 8, 1993, the examining attorney will withdraw the §2(e)(3) refusal, but will not withdraw the §2(a) refusal."

        It would appear to us that the converse is also true in a case like the case at bar involving a geographic mark: unless the applicant is seeking registration on the Supplemental Register with a claim of first use in commerce predating the NAFTA implementation date of December 8, 1993, or is seeking registration on the Principal Register under Section 2(f) based on a claim that the mark had acquired distinctiveness prior to December 8, 1993, the proper refusal is under Section 2(e)(3), not Section 2(a), and the Section 2(a) refusal, if made, should be withdrawn."

    • In re Consolidated Specialty Restaurants, Inc., Serial No. 75857797, (TTAB 2004).
      • The North American Free Trade Agreement (NAFTA) Implementation Act, Pub. L. No. 103-182, 107 Stat. 2057 (1993) amended Section 2(e)(2) of the Trademark Act by deleting reference to primarily geographically deceptively misdescriptive marks; adding Section 2(e)(3) to the Trademark Act to prohibit registration of primarily geographically deceptively misdescriptive marks; and amending Section 2(f) of the Trademark Act to eliminate primarily geographically deceptively misdescriptive marks from becoming registrable via a showing of acquired distinctiveness.

        FOOTNOTE 2 "Applicant's assertion that its mark has acquired distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f), is unavailing due to the NAFTA Implementation Act of 1993 amendments to the Trademark Act. The NAFTA amendments were enacted in 1993 and applicant's claimed date of first use is October 17, 1994. Therefore, applicant's mark could not have become distinctive in connection with applicant's restaurant services prior to the NAFTA amendments, making applicant's mark ineligible for registration on the Principal Register under Section 2(f) of the Trademark Act. (We make clear that we are not commenting on whether applicant has shown acquired distinctiveness of this mark for these services as that question is irrelevant in this case.)"

  • Case Finding: The term "Yosemite," alone, conveys a readily recognizable geographic significance which is not obscure or remote but rather is generally known to the public.
    • In re Spirits of New Merced, LLC, Serial No. 78710805, (TTAB 2007)
      • We find that the term "Yosemite," alone, conveys a readily recognizable geographic significance. We further find no genuine issue that the primary significance of "Yosemite" is a geographic place which is not obscure or remote but rather is generally known to the public. Applicant's evidence and arguments fail to raise any genuine issue regarding the primary significance of the term.
  • Case Finding: Cases finding a term was still geographic, regardless of the arugment that the term relates to the theme of a restaurant.
    • In re Spirits of New Merced, LLC, Serial No. 78710805, (TTAB 2007)
      • Applicant also argues that its mark YOSEMITE BEER relates to the decorative "cowboy-western" theme of its restaurant and menu items, and that it "does not purport any relationship to Yosemite National Park." (Brief, p. 4.) There is no evidence properly of record to support this contention,6 but more important, any such theme of applicant's restaurant, to the extent one exists, is irrelevant because applicant is seeking registration for beer, not for restaurant services or for beer brewed on the premises of a restaurant. Also, cf., as to themes of services, In re Consolidated Specialty Restaurants Inc., 71 USPQ2d 1921, 1929 (TTAB 2004) (COLORADO STEAKHOUSE and design for restaurant services held primarily geographically deceptively misdescriptive of restaurant services; "To the extent the copies of menus and wall art from applicant's steakhouses relate specifically to Colorado, they serve to strengthen the association of applicant's restaurants/steakhouses with Colorado"); and In re Ruffin Gaming, LLC, 66 USPQ2d 1924 (TTAB 2002) [FISHERMAN'S WHARF held merely descriptive of the theme of applicant's entertainment services which include hotel services, restaurant services, nightclub services, café services and providing convention facilities).
  • Case Finding: Where the applicant did not disclose its geographic location to the Examining Attorney, the TTAB found applicant's failure to produce such information, if available, to be telling.
    • In re South Park Cigar, Inc., Serial No. 78486382, (TTAB 2007)
      • With respect to applicant's argument that "[r]equiring applicant to name its exact location within the city of Tampa exalts form over substance," we are not persuaded.7

        FOOTNOTE 7 "Of course, this whole issue could have been resolved if the Trademark Examining Attorney, in response to applicant's statement that it "has relocated" to Tampa, had specifically required applicant, pursuant to Trademark Rule 2.61(b), 37 C.F.R. § 2.61(b), to provide its street address or other proof that it was within some recognized boundary of Ybor City. Such a requirement was never made. See, e.g., In re DTI Partnership LLP, 67 USPQ2d 1699 (TTAB 2003); In re SPX Corp. 63 USPQ2d 1592 (TTAB 2002); In re Page, 51 USPQ2d 1660 (TTAB 1999); TMEP §814. However, because this information regarding applicant's location is solely within applicant's control, and is so obviously vital to any attempt by applicant to rebut the Trademark Examining Attorney's prima facie (and logically accurate) showing that applicant, merely by being in Tampa, is not necessarily in Ybor City, we find applicant's failure to produce such information, if available, to be telling."

  • Case Finding: Example of evidence of record which shows the term would be recognized as a geographic location by the relevant purchasing public.
    • In re South Park Cigar, Inc., Serial No. 78486382, (TTAB 2007)
      • In the present case, the evidence of record shows that the relevant purchasing public, i.e., cigar aficionados who visit or read about Ybor City, as well as other visitors or potential visitors to Tampa and to the Ybor City area of Tampa, are likely to make a goods/place association between Ybor City and cigars. The Ybor Times website informs visitors and potential visitors that "[t]oday, the streets of Ybor City are again home to a slew of cigar stores and carts." The website goes on to list the names, addresses and phone numbers of ten retail cigar stores, twelve mail order cigar retailers, and four cigar manufacturers, all located in Ybor City. Frommer's travel guide informs visitors and potential visitors that Ybor is "one of the best places in Florida to buy hand-rolled cigars." Fodor's travel guide informs visitors and potential visitors to Ybor City that "[g]uided walking tours of the area ($5) enable you to see artisans handroll cigars following time honored methods." This evidence suffices to establish the requisite "reasonable predicate" for concluding that the relevant purchasing public is likely to make an association between cigars and Ybor City, i.e., that they are likely to regard Ybor City as a "known source" for cigars.
  • Case Finding: Example of evidence of record supporting a finding of materiality.
    • In re South Park Cigar, Inc., Serial No. 78486382, (TTAB 2007)
      • Moreover, cigars clearly have been shown to be a "traditional" Ybor City product, a fact which in itself may suffice to support a finding of materiality. In re Save Venice New York, supra.
  • Case Finding: The evidence clearly demonstrates that the word "Vegas" is an abbreviation for Las Vegas.
    • United States Playing Card Company v. Harbro, LLC, Opposition No. 91162078, (TTAB 2006).
      • The first prong of the test is whether the mark's primary significance is a generally known geographic location. The evidence clearly demonstrates that the word "Vegas" is an abbreviation for Las Vegas.
  • Case Finding: There is a goods-place association between playing cards and Las Vegas.
    • United States Playing Card Company v. Harbro, LLC, Opposition No. 91162078, (TTAB 2006).
      • The second prong of the test requires proof that the public is likely to believe that applicant's playing cards originate in Las Vegas. "Under this prong, we consider whether the public would reasonably identify or associate the goods sold under the mark with the geographic location contained in the mark." In re Save Venice New York Inc., 259 F.3d 1346, 59 USPQ2d 1778, 1783 (Fed. Cir. 2001).
    • United States Playing Card Company v. Harbro, LLC, Opposition No. 91162078, (TTAB 2006).
      • Opposer has submitted evidence sufficient to prove that Las Vegas is well-known for, inter alia, casinos and gambling. Because playing cards are closely associated with gambling, there is an indirect association between Las Vegas and playing cards. In re Save Venice New York Inc., 59 USPQ2d at 1784 ("the registrability of a geographic mark may be measured against the public's association of that region with both its traditional goods and any related goods or services that the public is likely to believe originate there. The essence of the test is whether consumers are likely to be confused by the source of the related goods identified by a distinctive geographic mark." (Emphasis added)).
    • United States Playing Card Company v. Harbro, LLC, Opposition No. 91162078, (TTAB 2006).
      • Despite the lack of any evidence demonstrating a consumer association directly between playing cards and Las Vegas, because of the association of Las Vegas with casinos and gambling and the association of gambling with playing cards, consumers may associate playing cards with Las Vegas. Accordingly, we find that there is a goods-place association between playing cards and Las Vegas.
  • Case Finding: The final prong of the three-part test requires proof that the misleading goods-place association is a material factor in the customer's decision to purchase applicant's playing cards.
    • United States Playing Card Company v. Harbro, LLC, Opposition No. 91162078, (TTAB 2006).
      • The final prong of the three-part test requires proof that the misleading goods-place association is a material factor in the customer's decision to purchase applicant's playing cards. The materiality prong supports the statutory requirement of deception. In re Les Halles De Paris J.V., 334 F.3d 1371, 67 USPQ2d 1539, 1542 (Fed. Cir. 2003); In re California Innovations Inc., 66 USPQ2d at 1856.
    • United States Playing Card Company v. Harbro, LLC, Opposition No. 91162078, (TTAB 2006).
      • Neither opposer's evidence, nor its arguments, is persuasive. Although the evidence demonstrates that consumers are interested in obtaining cards that were used in casinos, the evidence does not establish that they are interested in purchasing playing cards that were manufactured or used in Las Vegas. Opposer's witness Daniel Espenscheid testified that the canceled playing cards were good souvenirs because they "were actually in play on the tables," not because they were from Las Vegas. (Espenscheid Dep. pp. 39-40). The entities selling the canceled playing cards tout that the cards were formerly used in the casinos, as opposed to being made or used in Las Vegas. The representative decks of canceled playing cards all have a seal with a legend to the effect that "These cards were used in actual play in the casino." (Espenscheid Dep. pp. 36-40; Exhibits 20-26). Only Espenscheid Exhibit 20, the deck from the MGM Grand, referenced Las Vegas. In that instance, the commercial impression engendered therein is that the MGM Grand is located in Las Vegas, as opposed to the identification of Las Vegas as the geographic origin of the cards.
  • Case Finding: Cases which found that the geographic location is suggestive of evocative of a particular style.
    • In re Narada Productions, Inc., Serial No. 75/460,277, (TTAB 2001).
      • Finally, we are not persuaded by applicant's argument that the primary significance of CUBA L.A. is that it is suggestive or evocative of the style of music featured in applicant's goods and services. Applicant has presented no evidence that there is a recognized genre or style of music known as "Cuba L.A.," such that the designation CUBA L.A. would be seen primarily as identifying such style of music rather than the geographic origin of applicant's goods and services. See In re Wada, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999), aff'g 48 USPQ2d 1689 (TTAB 1998)(no evidence of a "New York style" of the leather goods at issue); In re Bacardi & Co. Ltd., 48 USPQ2d 1031 (TTAB 1998)(no evidence that primary significance of HAVANA (as applied to alcoholic beverages) is that of "pre-Castro free-wheeling lifestyle" rather than that of geographic location). Compare In re The Fred Gretsch Company, Inc., 159 USPQ 60 (TTAB 1968)(NASHVILLE suggestive of style of country and western music, and thus not primarily geographically deceptively misdescriptive of guitars made in New York); but see In re Opryland USA Inc., 1 USPQ2d 1409 (TTAB 1986)(THE NASHVILLE NETWORK primarily geographically descriptive of television program production and distribution).
  • Case Finding: Under the second prong of the test purchasers would associate the geographic locations comprising the mark with the identified goods and services.
    • In re Narada Productions, Inc., Serial No. 75/460,277, (TTAB 2001).
      • We turn next to the second prong of the Section 2(e)(3) test, i.e., whether a goods/place and services/place association exists between applicant's goods and services and the places named in the mark.
    • In re Narada Productions, Inc., Serial No. 75/460,277, (TTAB 2001).
      • As discussed above, the primary significance of the mark would be that of two well-known geographic locations, Cuba and L.A., rather than that of a mythical place called "Cuba L.A." The issue to be decided is whether purchasers would associate those places with the identified goods and services. See In re London & Edinburgh Insurance Group Ltd., supra, 36 USPQ2d at 1369-70.
    • In re Narada Productions, Inc., Serial No. 75/460,277, (TTAB 2001).
      • We find that purchasers would make an association between Cuba and the goods and services identified in applicant's applications. Notwithstanding the existence of the United States embargo on trade with Cuba, it appears from the record that purchasers reasonably could assume that music-related goods and services of Cuban origin are available in the United States, including compact discs and live performances such as those identified in applicant's applications.
    • In re Narada Productions, Inc., Serial No. 75/460,277, (TTAB 2001).
      • Applicant argues that the Trademark Examining Attorney's evidence fails to show that Cuban music is "well known and famous among purchasers," inasmuch as "none of the articles points to widespread recognition and/or industry purchasing statistics." Citing In re Venice Maid Applicant argues that the Trademark Examining Attorney's evidence fails to show that Cuban music is "well known and famous among purchasers," inasmuch as "none of the articles points to widespread recognition and/or industry purchasing statistics." Citing In re Venice Maid...However, to establish the requisite goods/place and services/place associations, the Trademark Examining Attorney is not required to prove that Cuba is famous or well-known for the goods and services at issue. See In re Nantucket, supra, 213 USPQ at 898 (Neis, Judge, concurring); In re Handler Fenton Westerns, Inc., 214 USPQ 848 (TTAB 1982).
    • In re Narada Productions, Inc., Serial No. 75/460,277, (TTAB 2001).
      • Furthermore, in this case, unlike in the Venice Maid case, there is sufficient evidence in the record to establish that the particular types of goods and services identified in the applications would be known or assumed to originate in or from the place named in the mark. The Trademark Examining Attorney has done more than merely "substantiate[] the existence of Cuban music generally."
    • In re Narada Productions, Inc., Serial No. 75/460,277, (TTAB 2001).
      • We also find that the requisite goods/place and services/place association exists between the goods and services identified in applicant's applications and the other place named in applicant's mark, i.e., "L.A." or Los Angeles. Applicant admits "that people generally recognize L.A. as an arts and entertainment mecca." (Brief, at 11- 12.) Moreover, the Trademark Examining Attorney has submitted an Internet search printout which includes listings and synopses of web sites involving the music industry in Los Angeles, including those covering the L.A. Opera, various rock/pop bands and independent artists located in L.A., music production companies and record labels located in L.A., and L.A. venues for live musical performances. This evidence suffices to establish, prima facie, that purchasers would reasonably assume that music related goods and services of the types identified in applicant's applications can and do originate in and from Los Angeles.
    • In re Narada Productions, Inc., Serial No. 75/460,277, (TTAB 2001).
      • Applicant's argument that there is no connection between L.A. and applicant's particular style of music is not persuasive. The Board rejected a similar argument in In re Midwest Nut & Seed Company, Inc., 214 USPQ 852 (TTAB 1982), wherein the applicant sought to register CALIFORNIA MIX for goods identified in the application as "mixtures of dried fruits and nut meats." In finding a goods/place association between California and the goods identified in the application, the Board relied on the fact that purchasers associated California with fruits and nuts generally, and rejected as irrelevant the fact that applicant's actual goods consisted largely of fruits and nuts which would not be assumed to have originated in California, such as bananas, pineapples, Brazil nuts and Mexican pumpkin seeds. Likewise, because there exists an association between music, generally, and Los Angeles, and because the identifications of goods and services in applicant's applications are not limited in any way as to musical style or genre, applicant's contention that there is no association between Los Angeles and applicant's particular style of music is unavailing.
    • In re Narada Productions, Inc., Serial No. 75/460,277, (TTAB 2001).
      • Moreover, even if applicant's identifications of goods and services had been limited in such a way as to cover only applicant's particular "Cuban style" of music, we would find that the requisite goods/place and services/place associations between applicant's goods and services and Los Angeles exist. If, as applicant contends, purchasers are aware that Los Angeles is the origin of goods and services involving a wide variety of different musical styles and genres, it stands to reason that purchasers could logically assume that goods and services involving applicant's particular "Cuban-style" music likewise have their origin in Los Angeles.
  • Case Finding: Terms such as "Danish," "Scandinavian" or "Mediterranean," do indeed designate particular styles of furniture, those terms would be unregistrable as merely descriptive, if not generic, designations under Section 2(e)(1) of the Trademark Act, 15 U.S.C §1052(e)(1), rather than simply suggesting, as asserted by applicant, the geographical source of the furniture's production.
    • In re Broyhill Furniture Industries, Inc., Serial No. 75/473,959, (TTAB 2001).
      • Furthermore, as used in connection with furniture, while the relatively few geographical terms of which we are aware and may judicially notice, such as "Danish," "Scandinavian" or "Mediterranean," do indeed designate particular styles of furniture, those terms would be unregistrable as merely descriptive, if not generic, designations under Section 2(e)(1) of the Trademark Act, 15 U.S.C §1052(e)(1), rather than simply suggesting, as asserted by applicant, the geographical source of the furniture's production.
  • Case Finding: Restaurant services are so ubiquitous and a state is such a large, significant geographic area that it can be treated as a matter of common knowledge that restaurant services are rendered throughout every state of the United States.
    • In re Consolidated Specialty Restaurants, Inc., Serial No. 75857797, (TTAB 2004).
      • As the Board stated in In re California Pizza Kitchen, 10 USPQ2d 1704, 1706-1707(TTAB 1988): "[R]estaurant services are so ubiquitous and a state is such a large, significant geographic area that it can be treated as a matter of common knowledge that restaurant services are rendered throughout every state of the United States, including California."
  • Case Finding: The second prong of the test requires some additional reason for the consumer to associate the services with the geographic location invoked by the mark and, specifically with regard to restaurant services, that the PTO must show that patrons will likely be misled to make some meaningful connection between the restaurant (the service) and the relevant place.
    • In re Consolidated Specialty Restaurants, Inc., Serial No. 75857797, (TTAB 2004).
      • While there is no doubt that restaurant services are offered in Colorado, the Court has made clear that "the second prong of the test requires some additional reason for the consumer to associate the services with the geographic location invoked by the mark" and, specifically with regard to restaurant services, that "the PTO must show that patrons will likely be misled to make some meaningful connection between the restaurant (the service) and the relevant place." In re Les Halles, 67 USPQ2d at 1541.
  • The TTAB need not consider a Section 2(a) claim in view of the Federal Circuit's pronouncement that it anticipates that the PTO will usually address geographically deceptive marks under subsection 2(e)(3) of the amended Lanham Act rather than subsection 2(a).
    • Corporacion Habanos, S.A. v. Anncas, Inc., Opposition No. 91165519 (TTAB 2008)
      • We need not consider opposer's Section 2(a) claim in view of the Federal Circuit's pronouncement that it "anticipates that the PTO will usually address geographically deceptive marks under subsection 2(e)(3) of the amended Lanham Act rather than subsection 2(a)." In re California Innovations Inc., 329 F.3d 1334, 66 USPQ2d 1853, 1856-57 (Fed. Cir. 2003). See also Corporacion Habanos S.A. v. Guantanamera Cigars Co., 86 USPQ2d 1473, 1475 (TTAB 2008) ["… we will give no further consideration to [opposer's] Section 2(a) claim, but consider the Section 2(e)(3) ground"].
  • Where Oopposer's Sections 2(e)(3) and 2(a) claims are not based on any ownership claim to a confiscated mark, and Section 211(b) has no applicability.
    • Corporacion Habanos, S.A. v. Anncas, Inc., Opposition No. 91165519 (TTAB 2008)
      • Here, opposer's Sections 2(e)(3) and 2(a) claims are not based on any ownership claim to a confiscated mark, and Section 211(b) has no applicability.
Corporacion Habanos, S.A. v. Anncas, Inc., Opposition No. 91165519 (TTAB 2008) In re Beaverton Foods, Inc., Serial No. 76624790, (TTAB 2007) In re South Park Cigar, Inc., Serial No. 78486382, (TTAB 2007) In re South Park Cigar, Inc., Serial No. 78486382, (TTAB 2007) In re Spirits of New Merced, LLC, Serial No. 78710805, (TTAB 2007) United States Playing Card Company v. Harbro, LLC, Opposition No. 91162078, (TTAB 2006) In re Consolidated Specialty Restaurants, Inc., Serial No. 75857797, (TTAB 2004) In re Broyhill Furniture Industries, Inc., Serial No. 75/473,959, (TTAB 2001) In re Narada Productions, Inc., Serial No. 75/460,277, (TTAB 2001) In re Boyd Gaming Corporation, Serial No. 75/541,256, (TTAB 2000) Grand Total
Corporacion Habanos S.A. v. Guantanamera Cigars Co., 86 USPQ2d 1473 (TTAB 2008) 1
In re South Park Cigar Inc., 82 USPQ2d 1507 (TTAB 2007) 1
In re Brouwerij Nacional Balashi NV, 80 USPQ2d 1820 (TTAB 2006) 1
United States Playing Card Company v. Harbro, LLC, 81 USPQ2d 1537 (TTAB 2006) 1
In re Joint-Stock Company "Baik" 80 USPQ2d 1305 (TTAB 2006) 1
In re Consolidated Specialty Restaurants Inc., 71 USPQ2d 1921 (TTAB 2004) 1
In re California Innovations Inc., 329 F.3d 1334, 66 USPQ2d 1853, (Fed. Cir. 2003) 5
In re DTI Partnership LLP, 67 USPQ2d 1699 (TTAB 2003) 1
In re Les Halles De Paris J.V., 334 F.3d 1371, 67 USPQ2d 1539 (Fed. Cir. 2003) 4
In re Pacer Technology, 338 F.3d 1348, 67 USPQ2d 1629 (Fed. Cir. 2003) 1
In re Ruffin Gaming, LLC, 66 USPQ2d 1924 (TTAB 2002) 1
In re SPX Corp. 63 USPQ2d 1592 (TTAB 2002) 1
In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001) 1
In re Nett Designs Inc., 236 F.3d 133, 957 USPQ2d 1564 (Fed. Cir. 2001) 2
In re Save Venice New York Inc., 259 F.3d 1346, 59 USPQ2d 1778 (Fed. Cir. 2001) 6
In re Page, 51 USPQ2d 1660 (TTAB 1999) 1
In re Wada, 194 F.3d 1297, 52 USPQ 1539 (Fed. Cir. 1999) 5
In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998) 3
In re Hiromichi Wada, 48 USPQ2d 1689 (TTAB 1998) 1
In re U.S. Cargo Inc., 49 USPQ2d 1702 (TTAB 1998) 1
In re Bacardi & Co. Ltd., 48 USPQ2d 1031 (TTAB 1997) 3
Fred Hayman Beverly Hills Inc. v. Jacques Bernier Inc., 38 USPQ2d 1691 (TTAB 1996) 1
In re London & Edinburgh Insurance Group Ltd., 36 USPQ2d 1367 (TTAB 1995) 1
In re MCO Properties Inc., 38 USPQ2d 1154 (TTAB 1995) 2
In re Nantucket Allserve Inc., 28 USPQ2d 1144 (TTAB 1993) 1
In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694 (TTAB 1992) 2
In re Sharky's Dry Goods Co., 23 USPQ2d 1061 (TTAB 1992) 1
Institut National Des Appellations D'Origine v. Vintners Int'l Co., 958 F.2d 1574, 22 USPQ2d 1190 (Fed. Cir. 1992) 2
In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991) 1
In re Cabot Corp., 15 USPQ2d 1224 (TTAB 1990) 1
In re Jacques Bernier Inc., 894 F.2d 394, 13 USPQ2d 1725 (Fed. Cir. 1990) 1
In re California Pizza Kitchen Inc., 10 USPQ2d 1704 (TTAB 1988) 3
Yamaha Int'l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988) 1
Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) 1
In re Societa Generale des Eaux Minerals de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987) 3
In re BankAmerica Corporation, 231 USPQ 873 (TTAB 1986) 1
In re Cambridge Digital Systems, 1 USPQ2d 1659 (TTAB 1986) 2 3
In re Opryland USA Inc., 1 USPQ2d 1409 (TTAB 1986) 2
In re The Cookie Kitchen Inc., 228 USPQ 873 (TTAB 1986) 1
In re Jack's Hi-Grade Foods Inc., 226 USPQ 1028 (TTAB 1985) 1
In re Loew's Theatres Inc., 749 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985) 6
Warwood v. Hubbard, 228 USPQ 702 (Mont. 1985) 1
In re House of Windsor Inc., 221 USPQ 53 (TTAB 1983) 1
In re Hub Distributing Inc., 218 USPQ 284 (TTAB 1983) 1
In re Handler Fenton Westerns Inc., 214 USPQ 848 (TTAB 1982) 1
In re Midwest Nut & Seed Company Inc., 214 USPQ 852 (TTAB 1982) 1
In re Nantucket, 677 F.2d 95, 213 USPQ 889 (CCPA 1982) 4
In re Stenographic Machines Inc., 199 USPQ 313 (Comm'r Pats. 1978) 1
In re Charles S. Loeb Pipes Inc., 190 USPQ 238 (TTAB 1975) 1
National Aeronautics & Space Administration v. Record Chemical Co. Inc., 185 USPQ 563 (TTAB 1975) 1
AMF Inc. v. American Leisure Products Inc., 474 F.2d 1403, 177 USPQ 268 (CCPA 1973) 1
In re The Fred Gretsch Company Inc., 159 USPQ 60 (TTAB 1968) 1
In re Cooper, 117 USPQ 396 (CCPA 1958) 1
Grand Total 2 9 14 2 22 5 9 11 10 8 92

Sec. 1052. Trademarks registrable on principal register; concurrent registration

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it--
  1. (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.
  2. (b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.
  3. (c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.
  4. (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the applications pending or of any registration issued under this chapter; (2) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or (3) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947. Use prior to the filing date of any pending application or a registration shall not be required when the owner of such application or registration consents to the grant of a concurrent registration to the applicant. Concurrent registrations may also be issued by the Director when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Director shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons.
  5. (e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional.
  6. (f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant's goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant's goods in commerce before December 8, 1993.
A mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be refused registration only pursuant to a proceeding brought under section 1063 of this title. A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be canceled pursuant to a proceeding brought under either section 1064 of this title or section 1092 of this title.