Pursuant to 15 U.S.C. §1052(e)(2), a mark that is primarily geographically descriptive of the goods or services cannot be registered on the Principal Regiser.

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

  1. (1) the primary significance of the mark is a generally known geographic location;
  2. (2) the goods or services originate in the place identified in the mark; and
  3. (3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark.

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  • A geographic name is not unprotectible or unregistrable because it can be labeled a geographic name, but because it tells the public something about the product or the producer absent which his competitor also has a right to inform the public. Thus, the names of places devoid of commercial activity are arbitrary usage; moreover, where the geographic significance of a name is lost on the public because of obscurity, there too, the usage becomes arbitrary."
    • In re Brouwerij Nacional Balashi NV, Serial No. 78304942, (TTAB 2006).
      • We would add that this appeal is also like In re Brauerei Aying Franz Inselkammer KG, 217 USPQ 73, 75 (TTAB 1983), in which the Board held the term "AYINGER," in an application to register the mark "AYINGER BIER" ("BIER" disclaimed) for "beer" which was produced in the German town of Aying, to have only a minor, remote or obscure geographical significance and thus the mark was not primarily geographically descriptive.9 In so finding, the Board pointed out that: "The evidence relied upon here is inadequate .... The Examining Attorney has not provided any evidence which would refute the ... obscurity of Aying or establish that it is known ... as a beer producing area. Quoting Judge Nies in her concurring opinion in ... [In re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889, 897 (CCPA 1982)], "A geographic name is not unprotectible or unregistrable because it can be labeled a geographic name, but because it tells the public something about the product or the producer absent which his competitor also has a right to inform the public. Thus, the names of places devoid of commercial activity are arbitrary usage." We would add that where the geographic significance of a name is lost on the public because of obscurity, there too, the usage becomes arbitrary." Id. at 75.
  • Geographically descriptive terms are generally regarded as inherently weak and entitled to less protection than arbitrary or suggestive marks.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • Geographically descriptive terms are generally regarded as inherently weak and entitled to less protection than arbitrary or suggestive marks.
  • Ordinarily, a term that describes the geographic source of a product is not protectable without a showing of acquired distinctiveness.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • Ordinarily, a term that describes the geographic source of a product is not protectable without a showing of acquired distinctiveness.
  • The test for determining whether a mark is primarily geographically descriptive.
    • In re Cheezwhse.com, Inc., Serial No. 78694122, (TTAB 2008).
      • We turn next to the refusal under Trademark Section 2(e)(2). The test for determining whether a mark is primarily geographically descriptive is whether (1) the primary significance of the mark is the name of a place known generally to the public, and (2) the public would make a goods/place association, that is, believe that the goods identified in the application originate in that place. If these elements are met, and if the applicant's goods in fact originate or will originate in or from the place named in the mark, then the mark is primarily geographically descriptive of the goods. See In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); In re Joint-Stock Co. "Baik", 80 USPQ2d 1305 (TTAB 2006); and In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001).
    • In re Brouwerij Nacional Balashi NV, Serial No. 78304942, (TTAB 2006).
      • As a general proposition, in order for registration of a mark to be properly refused on the ground that it is primarily geographically descriptive of an applicant's goods or services, it is necessary to establish (i) that the primary significance of the mark is that of the name of a place generally known to the public and (ii) that the public would make a goods/place or services/place association, that is, believe that the goods or services for which the mark is sought to be registered originate in that place. See, e.g., In re JT Tobacconists, 59 USPQ2d 1080, 1091-82 (TTAB 2001); University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385, 1402 (TTAB 1994); and 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). Provided that these conditions are met, and the goods or services come from the place named by or in the mark, the mark is primarily geographically descriptive.
    • In re Joint-Stock Company "Baik", Serial No. 78341041, (TTAB 2006).
      • The test for determining whether a term is primarily geographically descriptive is whether (1) the term in the mark sought to be registered is the name of a place known generally to the public, and (2) the public would make a goods/place association, that is, believe that the goods or services for which the mark is sought to be registered originate in that place. See In re Societe Generale des Eaux Minerals de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987) (hereinafter Vittel); In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001); University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385 (TTAB 1994); and In re California Pizza Kitchen, Inc., 10 USPQ2d 1704 (TTAB 1988).
    • In re Trans Continental Records, Inc., Serial No. 75/628,844, (TTAB 2002).
      • A mark is considered to be primarily geographically descriptive if (1) it is the name of a place and this place is known generally to the public, and (2) the public would make a goods/place association, that is, believe that the goods or services for which the mark is sought to be registered originate in that place. See In re Urbano, 51 USPQ2d 1776 (TTAB 1999); In re California Pizza Kitchen, Inc., 10 USPQ2d 1704 (TTAB 1988).
    • In re JT Tobacconists, Serial No. 75/598,351, (TTAB 2001).
      • As a general proposition, in order for registration of a mark to be properly refused on the ground that it is primarily geographically descriptive of an applicant's goods or services, it is necessary to establish that (i) the primary significance of the mark is that of the name of a place generally known to the public and (ii) that the public would make a goods/place or services/place association, that is, believe that the goods or services for which the mark is sought to be registered originate in that place. See, e.g., University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385, 1402 (TTAB 1994); and 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). Provided that these conditions are met, and the goods or services come from the place named by or in the mark, the mark is primarily geographically descriptive.
    • In re Jose Ignacio Guisado Urbano, Serial No. 74/441,447, (TTAB 1999).
      • Turning next to the Sections 2(e)(2) and 2(e)(3) refusals, the test for determining, under Section 2(e)(2), that a mark is primarily geographically descriptive, is whether (i) the mark sought to be registered is the name of a place and this place is known generally to the public, and (ii) the public would make a goods/place association, that is, believe that the goods or services for which the mark is sought to be registered originate in that place. See, e.g., University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385, 1402 (TTAB 1994); and In re California Pizza Kitchen, Inc., 10 USPQ2d 1704 (TTAB 1988), citing In re Societa Generale des Eaux Minerals de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987).
  • The determination of a goods/ or services/place association is not made in the abstract, but rather in connection with the goods or services with which the mark is used and from the perspective of the relevant purchasing public for those goods or services.
    • In re Brouwerij Nacional Balashi NV, Serial No. 78304942, (TTAB 2006).
      • The determination of such a goods/place or services/place association is not made in the abstract, but rather in connection with the goods or services with which the mark is used and from the perspective of the relevant purchasing public for those goods or services. See, e.g., In re MCO Properties Inc., 38 USPQ2d 1154, 1156 (TTAB 1995).
    • In re Brouwerij Nacional Balashi NV, Serial No. 78304942, (TTAB 2006).
      • As our primary reviewing court noted in In re Societe Generale des Eaux Minerales de Vittel S.A., supra at 3 USPQ2d 1451, which involved an application to register the mark "VITTEL" and bottle design for, inter alia, cosmetic products and an evidentiary record "show[ing] that Vittel is the name of a town in northeastern France in the Department of Voges, in the Voges mountains, which, in about 1962, had a population of 5475, had cold mineral water springs, and was known as a watering place, spa and resort": "In dealing with all of these questions of the public's response to word symbols, we are dealing with the supposed reactions of a segment of the American public, in this case the mill-run of cosmetics purchasers, not with the unusually well-traveled, the aficionados of European watering places, or with computer operators checking out the meaning of strange words on NEXIS." Id. at 3 USPQ2d 1452.
    • In re Joint-Stock Company "Baik", Serial No. 78341041, (TTAB 2006).
      • The determination of the goods/place association is made not in the abstract, but rather in connection with the goods or services with which the mark is used and from the perspective of the relevant public for those goods or services. See In re MCO Properties Inc., 38 USPQ2d 1154 (TTAB 1995) (FOUNTAIN HILLS geographically descriptive where relevant public for applicant's service of developing real estate includes people considering purchasing real property in Fountain Hills, Arizona).
  • If the goods do in fact emanate from the place named in the mark, the goods/place association can be presumed.
    • In re Joint-Stock Company "Baik", Serial No. 78341041, (TTAB 2006).
      • If the goods do in fact emanate from the place named in the mark, the goods/place association can be presumed. In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998).
  • The presumption that a geographic term is inherently weak does not attach to geographic terms that are used to certify regional origin.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • However, Section 2(e)(2) of the Trademark Act which prohibits registration of a mark that is primarily geographically descriptive of an applicant's goods, provides a specific exception for marks used to certify indications of regional origin under Section 4 of the Act. Thus, the presumption that a geographic term is inherently weak does not attach to geographic terms that are used to certify regional origin.
  • Geographic descriptiveness in a mark does not affect the scope of protection entitled to the mark.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • Nor can the geographic descriptiveness of DARJEELING in applicant's mark affect the scope of protection to which opposer's mark is entitled.
  • Where the evidence of record creates a genuine issue regarding the primary significance of a geographic term, the Examining Attorney must present sufficient evidence to establish that relevant consumers would make the geographic association.
    • In re Brouwerij Nacional Balashi NV, Serial No. 78304942, (TTAB 2006).
      • We further agree with applicant that, as stated in its initial brief, "the evidence of record, at a minimum, creates a genuine issue regarding the primary significance of 'Balashi' in the minds of American beer consumers." Accordingly, a goods/place association cannot be presumed from the fact that applicant's goods come from Balashi and it is incumbent upon the Examining Attorney to have presented evidence sufficient to establish that American consumers of beer would in fact make such an association. We concur with applicant, however, that the Examining Attorney has failed to do so.
  • Where there is no genuine issue that the geographical significance of a term is its primary significance, and where the geographical place named by the term is neither obscure nor remote, a public association of the goods or services with the place may ordinarily be presumed from the fact that the applicant's goods or services come from the geographical place named in the mark.
    • In re Brouwerij Nacional Balashi NV, Serial No. 78304942, (TTAB 2006).
      • Moreover, where there is no genuine issue that the geographical significance of a term is its primary significance, and where the geographical place named by the term is neither obscure nor remote, a public association of the goods or services with the place may ordinarily be presumed from the fact that the applicant's goods or services come from the geographical place named by or in the mark. See, e.g., In re JT Tobacconists, supra at 1082; In re Carolina Apparel, 48 USPQ2d 1542, 1543 (TTAB 1998); In re California Pizza Kitchen Inc., supra; and In re Handler Fenton Westerns, Inc., 214 USPQ 848, 850 (TTAB 1982).
    • In re JT Tobacconists, Serial No. 75/598,351, (TTAB 2001).
      • Moreover, where there is no genuine issue that the geographical significance of a term is its primary significance, and where the geographical place named by the term is neither obscure nor remote, a public association of the goods or services with the place may ordinarily be presumed from the fact that the applicant's goods or services come from the geographical place named in the mark. See, e.g., In re California Pizza Kitchen Inc., supra; and In re Handler Fenton Westerns, Inc., 214 USPQ 848, 850 (TTAB 1982).
  • The presence of generic or highly descriptive terms in a mark which also contains a primarily geographically descriptive term does not serve to detract from the primary geographical significance of the mark as a whole.
    • In re Brouwerij Nacional Balashi NV, Serial No. 78304942, (TTAB 2006).
      • In addition, the presence of generic or highly descriptive terms in a mark which also contains a primarily geographically descriptive term does not serve to detract from the primary geographical significance of the mark as a whole. See, e.g., In re JT Tobacconists, supra at 1082; In re Carolina Apparel, supra; In re Cambridge Digital Systems, 1 USPQ2d 1659, 1662 (TTAB 1986); and In re BankAmerica Corp., 231 USPQ 873, 875 (TTAB 1986).
    • In re JT Tobacconists, Serial No. 75/598,351, (TTAB 2001).
      • In addition, the presence of generic or highly descriptive terms in a mark which also contains a primarily geographically descriptive term does not serve to detract from the primary geographical significance of the mark as a whole. See, e.g., In re Cambridge Digital Systems, 1 USPQ2d 1659, 1662 (TTAB 1986); and In re BankAmerica Corp., 231 USPQ 873, 875 (TTAB 1986).
  • The fact that a term may have other meanings in other contexts does not necessarily negate the basis for refusal as long as the most prominent meaning or significance is geographic for the identified goods.
    • In re Brouwerij Nacional Balashi NV, Serial No. 78304942, (TTAB 2006).
      • "The fact that a term may have other meanings in other contexts does not necessarily negate the basis for refusal as long as the most prominent meaning or significance is geographic for the identified goods. In re Opryland USA Inc., 1 USPQ2d 1409 (TTAB 1986); In re Cookie Kitchen, Inc., 228 USPQ 873 (TTAB 1986); TMEP §1210.02(b)(i). In this case, the primary significance of Balashi is geographic for the identified goods."
  • Adjectival forms of geographic terms are also considered primarily geographically descriptive.
    • In re Joint-Stock Company "Baik", Serial No. 78341041, (TTAB 2006).
      • Finally, adjectival forms of geographic terms are also considered primarily geographically descriptive. In re Jack's Hi-Grade Foods, Inc., 226 USPQ 1028, 1029 (TTAB 1985) (NEAPOLITAN for sausage emanating from United States primarily geographically deceptively misdescriptive); Ex Parte La Union Agricola Sociedad Anonima, 73 USPQ 233 (ComrPats 1947) (La Tarragonesa adjectival form of Tarragona indicating something from Tarragona geographically descriptive of brandy from Tarragona).
  • Remoteness or obscurity is determined from the perspective of the average American consumer
    • In re Brouwerij Nacional Balashi NV, Serial No. 78304942, (TTAB 2006).
      • Furthermore, the Examining Attorney correctly notes in this regard that "[r]emoteness or obscurity is determined from the perspective of the average American consumer," citing In re Societe Generale des Eaux Minerales de Vittel S.A., supra at 3 USPQ2d 1452.
  • If there exists a genuine issue raised that the placed 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 or services, the Examining Attorney must furnish evidence sufficient to establish a public association of the goods or services with that place.
    • In re Joint-Stock Company "Baik", Serial No. 78341041, (TTAB 2006).
      • One exception to that presumption is "if there exists a genuine issue raised that 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." Vittel, supra at 1451. In that situation, the examining attorney must submit evidence sufficient to establish a public association with that place. Id.
    • In re Brouwerij Nacional Balashi NV, Serial No. 78304942, (TTAB 2006).
      • However, "if ... there exists a genuine issue raised that the placed named [by or] in the mark is so obscure or remote that purchasers would fail to recognize the term as indicating the geographical source of the goods [or services]," In re Societe Generale des Eaux Minerales de Vittel S.A., supra at 3 USPQ2d 1451, the Examining Attorney must furnish evidence sufficient to establish a public association of the goods or services with that place. Id.
  • Where there is no genuine issue that 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 Trans Continental Records, Inc., Serial No. 75/628,844, (TTAB 2002).
      • Where there is no genuine issue that 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 Harvey & Sons Ltd., 32 USPQ2d 1451 (TTAB 1994); In re Handler Fenton Westerns, Inc., 214 USPQ 848 (TTAB 1982).
  • Evidence: A limited number of articles using a geographic terms is insufficient to conclude that the term is anything but an obscure geographic term.
    • In re Trans Continental Records, Inc., Serial No. 75/628,844, (TTAB 2002).
      • Quite simply, the limited number of articles reflecting that O-TOWN is a nickname for Orlando is not sufficient for us to conclude that O-TOWN is anything but an obscure geographic term.
  • Evidence: It is indeed remarkable to see the thoroughness with which NEXIS can regurgitate a placename casually mentioned in the news.
    • In re Trans Continental Records, Inc., Serial No. 75/628,844, (TTAB 2002).
      • As our principal reviewing Court, in In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450, 1451 (Fed. Cir. 1987), commented, "[i]t is indeed remarkable to see the thoroughness with which NEXIS can regurgitate a placename casually mentioned in the news."
  • Case Finding: TTAB concluded that since the geographical significance of the term "tapatio" is lost on the public because of obscurity, it is, in effect, an arbitrary designation.
    • In re Trans Continental Records, Inc., Serial No. 75/628,844, (TTAB 2002).
      • We consider this case to be similar to ConAgra Inc. v. Saavedra, 4 USPQ2d 1245 (TTAB 1987), which involved the question of whether TAPATIO, which is defined as a person or thing from Guadalajara, is primarily deceptively geographically misdescriptive for goods not originating in Guadalajara. The Board stated, at 4 USPQ2d 1249: "while Guadalajara may be a large, well known city in Mexico, the question is how many people in the United States would know the geographical significance of "tapatio," that is, how many people would know it relates to persons or things Guadalajaran" We think the record in this case is inadequate to show that a significant portion of consumers purchasing meatless hot sauce would, upon seeing TAPATIO on a container of meatless hot sauce, conclude that it relates to a place name and that the product came from that place, rather than concluding that it is simply a trademark of a manufacturer engendering a Spanish connotation. ... We conclude, therefore, that since the geographical significance of the term "tapatio" is lost on the public because of obscurity, it is, in effect, an arbitrary designation...."
  • Case Finding: Examiner established the first element of the test for geographic descriptiveness where there simply is no doubt that the geographical significance of the term "MINNESOTA" is its primary significance.
    • In re JT Tobacconists, Serial No. 75/598,351, (TTAB 2001).
      • We agree with the Examining Attorney that the record in this case is sufficient to establish a prima facie case that the mark "MINNESOTA CIGAR COMPANY" is primarily geographically descriptive of applicant's cigars, cigar cases and humidors. Here, there simply is no doubt that the geographical significance of the term "MINNESOTA" is its primary significance, since such is its sole significance and, as one of the 50 states of the United States, Minnesota is plainly neither obscure nor remote. The additional presence in applicant's mark of the generic terminology "CIGAR COMPANY" for an entity in the business of selling cigars and related cigar products such as cigar cases and humidors does not detract from or otherwise alter the fact that the primary significance of the mark as a whole is geographical. See, e.g., In re Cambridge Digital Systems, supra; and In re BankAmerica Corp., supra. Accordingly, the Examining Attorney has clearly established that the first element of the test for whether applicant's mark is primarily geographically descriptive of its goods is met.
    • In re JT Tobacconists, Serial No. 75/598,351, (TTAB 2001).
      • We find that they would, inasmuch as a public association of applicant's goods with the State of Minnesota may be presumed from the fact that, as conceded by applicant, its goods "at a minimum [are] packaged and shipped from Minnesota" and thus such term identifies the point of origin of the goods. See, e.g., In re California Pizza Kitchen Inc., supra; and In re Handler Fenton Westerns, Inc., supra.
    • In re JT Tobacconists, Serial No. 75/598,351, (TTAB 2001).
      • There is no requirement, as the Examining Attorney correctly points out, that the State of Minnesota be noted for cigars and cigar products in order for a mark such as "MINNESOTA CIGAR COMPANY" to be held primarily geographically descriptive, and prospective purchasers of applicant's goods would reasonably believe that applicant's goods, being products manufactured either from tobacco or for use with tobacco products, originate in the State of Minnesota, since such state is the geographic location from which applicant produces and sells its cigars, cigar cases and humidors. See, e.g., In re Nantucket Allserve Inc., supra at 1146. Accordingly, we find that a goods/place association exists in that customers for applicant's goods would believe that its cigars, cigar cases and humidors are manufactured in the State of Minnesota and that, because applicant's goods do indeed come from such state, its mark is primarily geographically descriptive of its goods within the meaning of the statute.
  • Case Finding: Obscure geographical terms which are not primarily significant to the relevant purchasers as geographic terms are not necessarily primarily geographically descriptive.
    • In re Brouwerij Nacional Balashi NV, Serial No. 78304942, (TTAB 2006).
      • Further, in response to applicant's argument that the primary significance of the term "Balashi" cannot be geographical because it identifies a small, insignificant neighborhood in Aruba which, except for applicant's brewery and the government operated desalination plant, is otherwise essentially devoid of any meaningful commercial activity, the Examining Attorney asserts that such argument "is not persuasive" for the reason that "[a] term can be considered geographic even when it does not suggest exact geographic boundaries, i.e., if it refers to a 'subdivision of the earth--regions, counties, town[s], rivers, lakes, and other artificial geographic units,'" citing Burke-Parsons-Bowlby v. Appalachian Log Homes, 871 F.2d 590, 10 USPQ2d 1443, 1445 (6th Cir. 1989).
    • In re Brouwerij Nacional Balashi NV, Serial No. 78304942, (TTAB 2006).
      • As to her contention that the geographical location named by the term "Balashi" is neither obscure nor remote, and thus that a public association of applicant's beer with such place should be presumed from the fact that the its goods admittedly come from the geographical place named in or by, respectively, the marks "BALASHI BEER" and "BALASHI," the Examining Attorney asserts in her brief that "[t]he named geographic location need not be famous, but rather only likely to be associated with applicant's goods," citing In re Loew's Theatres, Inc., 769 F.2d 764, 226 USPQ 865, 868 (Fed. Cir. 1985).
    • In re Brouwerij Nacional Balashi NV, Serial No. 78304942, (TTAB 2006).
      • We concur with applicant, however, that the primary significance of the term "Balashi" is not geographical to beer purchasers in the United States. Specifically, while we disagree with applicant that such consumers would be aware of alternative meanings of such term as a variety of cabbage and a place in Bangladesh, since the present record reflects that those meanings are even more obscure than the geographical significance thereof as a location in Aruba, we agree with applicant that "Balashi" is so obscure or remote that purchasers of beer in the United States would typically fail to recognize the term as indicating the geographical source of applicant's goods.
    • In re Brouwerij Nacional Balashi NV, Serial No. 78304942, (TTAB 2006).
      • Based upon such declarations, and in view of other exhibits which it has introduced as evidence as to the primary significance of the term "Balashi," applicant persuasively argues in its initial brief that the "record establishes that the geographical significance of 'Balashi' is minor, obscure, and remote." Applicant, among other things, specifically points out that Balashi" is not the name of a city, county or district within the island "country" of Aruba; that it "is a small and commercially insignificant neighborhood in the district of Santa Cruz with no boundaries and no official status"; and that there are no hotels, government offices, post offices, churches or schools in Balashi, which has only a single restaurant. In fact, as applicant observes, the record shows that (footnotes omitted; emphasis in original):7 ""Balashi" is so insignificant, geographically, that it is ... [almost] impossible to find a geographic map identifying it as a place. The Examiner referenced a single map ... to support her argument that the primary significance of "Balashi" is geographical. .... In stark contrast, Applicant has submitted into evidence fourteen (14) maps which fail to identify "Balashi" as a geographical place. .... The obscurity and remoteness of this "place" is further evidenced by its omission in other heavily-relied upon references[,] namely encyclopedias and dictionaries. Researching the term "Balashi" in any one of a number of reliable and popular online encyclopedias (i.e., Encyclopedia Brittanica [sic], Encyclopedia.com, and Encarta) returns absolutely no results. .... The same is true for a search of Merriam-Webster's Dictionary. .... Clearly, this cumulative and reliable evidence supports the fact that the area is, at a minimum, comparatively unimportant, secluded, and unknown. Applicant concedes that there is some limited evidence to show that the neighborhood of "Balashi" was known as an area where gold was discovered in the 1800's and is currently home of Aruba's water desalination plant. .... However, such limited evidence does not prove that "Balashi" is immediately perceived by U.S. consumers as a geographical place. The Board need only examine recent photographs of the area to see how remote this neighborhood, for lack of a better word, is. ...."
    • In re Brouwerij Nacional Balashi NV, Serial No. 78304942, (TTAB 2006).
      • We consequently agree with applicant that "[t]his case is factually similar to" both In re Bavaria St. Pauli Brauerei AG, 222 USPQ 926, 927-28 (TTAB 1984), in which the Board found the term "JEVER," in an application to register the mark "JEVER" and design for "beer" which was produced in the German town of Jever, to have only an obscure geographical meaning and thus the mark was not primarily geographically descriptive,8 and In re Societe Generale des Eaux Minerales de Vittel S.A., supra at 3 USPQ2d 1452, in which our primary reviewing court found that: "There can be no doubt that the PTO has established that Vittel is in fact the name of a small town in the Voges mountain region of France where there is a resort with mineral springs--a spa-- where the water is bottled and thence distributed somewhere, but how many people in this country know that" Certainly Vittel is remote and we deem the evidence produced by the PTO insufficient to show that it is not obscure. We think the evidence is inadequate to show that the bulk of cosmetics purchasers, or even a significant portion of them, would upon seeing the word Vittel on a bottle of skin lotion or the like, conclude that it is a place name and that the lotion came from there, rather than simply a trademark or trade name of a manufacturer like Chanel, Bourgois, or Vuitton."
    • In re Brouwerij Nacional Balashi NV, Serial No. 78304942, (TTAB 2006).
      • Here, "Balashi" would be perceived as an arbitrary term which would serve to identify and distinguish applicant's goods because its geographical significance is essentially unknown to the relevant public, given that the record contains insufficient evidence to show that American beer consumers would in fact readily recognize "Balashi" as a geographical name.
  • Case Finding: The isolated area or neighborhood of Balashi in the Caribbean island of Aruba is simply so minor, remote and obscure that its geographic significance would not be known or otherwise readily apparent to purchasers of applicant's beer.
    • In re Brouwerij Nacional Balashi NV, Serial No. 78304942, (TTAB 2006).
      • We concur that in dealing with the supposed reactions of a segment of the American public, in this case the average American beer consumer and not the unusually well-traveled tourist or even the aficionados of foreign beers, the isolated area or neighborhood of Balashi in the Caribbean island of Aruba is simply so minor, remote and obscure that its geographic significance would not be known or otherwise readily apparent to purchasers of applicant's beer.
  • Case Finding: The fact that BAIKALSKAYA is the adjectival form of a geographic term does not diminish its geographic significance.
    • In re Joint-Stock Company "Baik", Serial No. 78341041, (TTAB 2006).
      • The fact that BAIKALSKAYA is the adjectival form of a geographic term does not diminish its geographic significance. In re Jack's Hi-Grade Food, Inc., supra.
  • Case Finding: TTAB not persuaded by argument that Americans have limited knowledge of world geography because its not the American public as a whole but rather the perception of that subset of Americans which purchase the goods/services at issue.
    • In re Joint-Stock Company "Baik", Serial No. 78341041, (TTAB 2006).
      • We are not persuaded by applicant's argument that Americans have limited knowledge of world geography and that they "could not find the Atlantic Ocean on a globe." Aside from the fact that applicant submitted no evidence to support this statement, we are not concerned with "the American public as a whole." Rather, as noted above, we must determine the perception of a subset of Americans, purchasers of vodka, including Russian vodka. Moreover, the record shows that the public at large is exposed to references to Lake Baikal and certainly the Russianspeaking public is even more likely to be aware of the geographic significance of the mark because they are most likely either from Russia, have Russian relatives, or became familiar with Russia, including major geographic sites, when learning the language.
  • Case Finding: A goods/place association was presumed where the applicant was located near the geographic area referenced in the geographic term.
    • In re Joint-Stock Company "Baik", Serial No. 78341041, (TTAB 2006).
      • Turning to the second prong in the test, we presume a goods/place association because applicant is located near Lake Baikal, in the city of Irkutsk. See In re Carolina Apparel, supra.
  • Case Finding: Showing that BAIKALSKAYA describes the geographic origin of an ingredient of the goods is not sufficient to make out a separate basis for refusal under Section 2(e)(1).
    • In re Joint-Stock Company "Baik", Serial No. 78341041, (TTAB 2006).
      • Showing that BAIKALSKAYA describes the geographic origin of an ingredient of the goods is not sufficient to make out a separate basis for refusal under Section 2(e)(1). Accordingly, the refusal under Section 2(e)(1) is reversed. See In re BankAmerica Corp., 231 USPQ 873 (TTAB 1986) (phrase BANK OF AMERICA primarily geographically descriptive of computerized financial data processing services but not merely descriptive of such services).
  • The Grand Canyon is a place that is generally known and not obscure.
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008 (TTAB 2008)
      • We have already concluded based on this record that the Grand Canyon is a place that is generally known and not obscure. See also In re Spirits of New Merced LLC, 85 USPQ2d 1614 (TTAB 2007) (YOSEMITE BEER held primarily geographically descriptive for beer).
  • A place does not have to be noted for a product to establish that a term is geographically descriptive.
    • In re Roy J. Mankovitz, Serial No. 77000589 (TTAB 2009)
      • A place does not have to be noted for a product to establish that a term is geographically descriptive. JT Tobacconists, 59 USPQ2d at 1084 ("There is no requirement. that the State of Minnesota be noted for cigars and cigar products in order for a mark such as 'MINNESOTA CIGAR COMPANY' to be held primarily geographically descriptive").
  • WEST enhances the geographically descriptive significance of the mark by providing further specificity to the geographical place indicated by the mark.
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008 (TTAB 2008)
      • In fact, WEST enhances the geographically descriptive significance of the mark by providing further specificity to the geographical place indicated by the mark.
  • Unlike "Fountain Hills" for real estate development services in Fountain Hills, Arizona, there is no connection between Montecito and applicant's goods and services other than applicant's address.
    • In re Roy J. Mankovitz, Serial No. 77000589 (TTAB 2009)
      • Unlike "Fountain Hills" for real estate development services in Fountain Hills, Arizona, there is no connection between Montecito and applicant's goods and services other than applicant's address. [MCO, 38 USPQ2d at 1156.]
  • The two questions are bound together, that is, there can be no services-place association if the place named is so obscure or remote that purchasers of the service at issue would not recognize it as a place.
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008 (TTAB 2008)
      • The two questions are bound together, that is, there can be no services-place association if the place named is so obscure or remote that purchasers of the service at issue would not recognize it as a place. Vittel, 3 USPQ2d at 1452.
  • We must consider whether the goods and services come from the area and whether the public would make a goods/place association; that is, would the public be likely to believe that the goods or services originate in the place named in the mark.
    • In re Roy J. Mankovitz, Serial No. 77000589 (TTAB 2009)
      • Next, we must consider whether the goods and services come from the area and whether the public would make a goods/place2 association; that is, would the public be likely to believe that the goods or services originate in the place named in the mark.
  • When there is no genuine issue that 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 Roy J. Mankovitz, Serial No. 77000589 (TTAB 2009)
      • When "there is no genuine issue that 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." Handler Fenton, 214 USPQ at 850 (emphasis added).
  • Case Finding: In this context as well, we again reject applicant's argument that the placement of WEST after GRAND CANYON in the mark in any way alters its character.
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008 (TTAB 2008)
      • In this context as well, we again reject applicant's argument that the placement of WEST after GRAND CANYON in the mark in any way alters its character. In re Joint-Stock Co. "Baik", 80 USPQ2d 1305 (TTAB 2006) (BAIKAL portion of "BAIKALSKAYA" mark for vodka is name of place known generally to public, since Lake Baikal is not remote or obscure place; BAIKALSKAYA, adjectival form of geographical term, likewise geographical).
  • Case Finding: The additional word "diet" would not be sufficient to establish a non-geographically descriptive meaning for the mark THE MONTECITO DIET.
    • In re Roy J. Mankovitz, Serial No. 77000589 (TTAB 2009)
      • We begin by noting that applicant's mark is not simply MONTECITO but rather THE MONTECITO DIET. However, the additional word "diet" would not overcome the primarily geographically descriptive refusal because the subject matter of applicant's goods and services include, inter alia, diet-related information. Therefore, the term "diet" would not be sufficient to establish a non-geographically descriptive meaning for the mark.
  • The mere fact that applicant sleeps, or has a corporate headquarters, in the location is not necessarily enough to establish a goods/place relationship.
    • In re Roy J. Mankovitz, Serial No. 77000589 (TTAB 2009)
      • However, the mere fact that applicant sleeps in Montecito is not necessarily enough to establish a goods/place relationship. Indeed, even the location of a corporate headquarters is not necessarily sufficient to show a goods/place relationship. In re John Harvey & Sons Ltd., 32 USPQ2d 1451, 1454 (TTAB 1994) ("The mere fact that applicant's headquarters are in Bristol, England does not mandate a finding here that a goods/place association should be presumed").
  • Blogs and global computer websites are not services necessarily tied to a particular location.
    • In re Roy J. Mankovitz, Serial No. 77000589 (TTAB 2009)
      • Applicant's blogs, providing health care information services, and global computer websites are not services necessarily "tied to a particular location." 2 McCarthy on Trademarks and Unfair Competition (4th ed. 2008), 14:29. Without evidence that applicant provides these services from a public location in Montecito, it would be speculation on our part to reach the conclusion that the goods or services originate there or that the public would understand that there is a goods/place relationship.
  • Discussion of cases which found the marks were primarily geographically descriptive.
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008 (TTAB 2008)
      • Furthermore, based on the record before us, we also conclude without hesitation that relevant consumers would associate applicant's services with the Grand Canyon. See In re U.S. Cargo Inc., 49 USPQ2D 1702 (TTAB 1998) (U.S. CARGO held primarily geographically descriptive for towable trailers carrying cargo and vehicles and for commercial purposes); In re Chalk's Int'l Airlines Inc., 21 USPQ2d 1637 (TTAB 1991) (PARADISE ISLAND AIRLINES held primarily geographically descriptive for transportation of goods/passengers by air).
  • Case Finding: The examining attorney has not met his burden of showing the mark THE MONTECITO DIET is primarily geographically descriptive for applicant's goods and services.
    • In re Roy J. Mankovitz, Serial No. 77000589 (TTAB 2009)
      • The limited information in this application does not convince us that applicant's goods or services originate in Montecito, California, or that the public will assume that these goods or services are from Montecito. We find that the examining attorney has not met his burden of showing the mark THE MONTECITO DIET is primarily geographically descriptive for applicant's goods and services. Accord In re Consolidated Specialty Restaurants, Inc., 71 USPQ2d 1921, 1924 (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").
  • Test for whether a mark is primarily geographically descriptive.
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008 (TTAB 2008)
      • To determine whether GRAND CANYON WEST is primarily geographically descriptive of applicant's services we must determine: (1) whether the primary significance of the mark is as the name of a place which is generally known; and (2) whether relevant purchasers would associate the services of applicant with the place named, that is, whether the public would believe that the services come from the place named. In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450, 1452 (Fed. Cir. 1987); In re JT Tobacconists, 59 USPQ2d 1080, 1081 (TTAB 2001); In re California Pizza Kitchen Inc., 10 USPQ2d 1704, 1705 (TTAB 1988).
  • Highly descriptive or generic wording does not convert a geographically descriptive term into a non-geographic term.
    • In re Roy J. Mankovitz, Serial No. 77000589 (TTAB 2009)
      • Highly descriptive or generic wording does not convert a geographically descriptive term into a non-geographic term. In re Compagnie Generale Maritime, 993 F.2d 841, 26 USPQ2d 1652 (Fed. Cir. 1993) (FRENCH LINE (stylized) primarily geographically descriptive of goods and services from France); In re Cambridge Digital Systems, 1 USPQ2d 1659, 1662 (TTAB 1986) (CAMBRIDGE DIGITAL and design primarily geographically descriptive when applicant's place of business is Cambridge, Massachusetts); and In re Carolina Apparel, 48 USPQ2d 1542, 1543 (TTAB 1998) ("The addition of a generic term to a geographic term does not avoid the refusal of primary geographic descriptiveness").
  • A mark if primarily geographically descriptive of the goods, that is, the goods actually come from the geographical place designated in the mark, the Examining Attorney must submit evidence to establish a public association of the goods with the place if, for example, there exists a genuine issue raised that 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.
    • In re Roy J. Mankovitz, Serial No. 77000589 (TTAB 2009)
      • "Furthermore, the Federal Circuit has quoted the board as correctly saying: ""[H]ere a refusal of registration is based on the finding that a mark if primarily geographically descriptive of the goods, that is, the goods actually come from the geographical place designated in the mark, the Examining Attorney must submit evidence to establish a public association of the goods with the place if, for example, there exists a genuine issue raised that 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."" In re Societe Generale Des Eaux Minerales de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450, 1451 (Fed. Cir. 1987) (emphasis omitted)."
  • Case Finding: There was no evidence that books and publications originate in Montecito, or that applicant's publications will originate in Montecito, or that the public would believe that applicant's online journals and health information services originate from applicant's home or even some other location in Montecito.
    • In re Roy J. Mankovitz, Serial No. 77000589 (TTAB 2009)
      • In this case, however, not only do we not have any evidence that books and publications originate in Montecito, but we have no specific evidence that applicant's publications will originate in Montecito. We add that there is also no evidence that the public would believe that applicant's online journals and health information services originate from applicant's home or even some other location in Montecito. See John Harvey & Sons, 32 USPQ2d at 1454 ("For 'Bristol' to be primarily geographically descriptive of applicant's cakes, Bristol, England would have to be associated with cakes flavored with sherry wine in such a way that the American public would be likely to assume that Bristol, England was the place in which these cakes originated")
  • Case Finding: The evidence is insufficient to support any public association on the part of the public of the term "Lauderdale" with fresh processed meat and poultry products.
    • In re Roy J. Mankovitz, Serial No. 77000589 (TTAB 2009)
      • In another case, applicant applied to register the mark LAUDERDALE FARM for meats and poultry. The fact that applicant was located in Lauderdale, Alabama, did not establish a goods/place relationship.
        That reference indicates only that it [Lauderdale County, Alabama] is a cotton-growing area and makes no reference to any of the products [meats and poultry] for which applicant now seeks to register the mark LAUDERDALE FARM. Even assuming that the facts set forth in the Gazetteer are common knowledge, an assumption we find difficult to accept, the evidence is insufficient to support any public association on the part of the public of the term "Lauderdale" with fresh processed meat and poultry products.
        In re Consolidated Foods Corp., 218 USPQ 184, 186 (TTAB 1983).
  • Case Finding: The evidence shows that Montecito refers to an area near Santa Barbara, California, with approximately 10,000 inhabitants and it is the home of many celebrities. There is no evidence that the term has any other meaning. We find that this minimal information does show that the term is a generally known geographic location.
    • In re Roy J. Mankovitz, Serial No. 77000589 (TTAB 2009)
      • The evidence shows that Montecito refers to an area near Santa Barbara, California, with approximately 10,000 inhabitants and it is the "home of many celebrities." There is no evidence that the term has any other meaning. We find that this minimal information does show that the term is a generally known geographic location. Accord In re MCO Properties Inc., 38 USPQ2d 1154, 1156 (TTAB 1995) ("The record shows that "FOUNTAIN HILLS" is the name of the town in Arizona where applicant is located and renders its services. The materials submitted by the Examining Attorney, as well as the specimens submitted by applicant with its pplication, establish this. The term sought to be registered is clearly a geographic name and has no other significance. This satisfies the first part of the test").
  • When goods come from a specific geographic location, that is normally enough to find a goods/place relationship.
    • In re Roy J. Mankovitz, Serial No. 77000589 (TTAB 2009)
      • Therefore, when goods come from a specific geographic location, that is normally enough to find a goods/place relationship. Compagnie Generale Maritime, 26 USPQ2d at 1655 ("We likewise hold that the Board did not clearly err in finding that 'France, a major manufacturing and commercial nation, would be perceived as the source of the numerous goods and services listed in the applications if the mark is primarily geographical'") and In re JT Tobacconists, 59 USPQ2d 1080, 1084 (TTAB 2001) ("[W]e find that a goods/place association exists in that customers for applicant's goods would believe that its cigars, cigar cases and humidors are manufactured in the State of Minnesota and that, because applicant's goods do indeed come from such state, its mark is primarily geographically descriptive of its goods").
  • Case Finding: In the NANTUCKET NECTARS case that the products did not have to be made on the island of Nantucket in order to establish a goods/place relationship, the applicant in that case had a substantial presence in that place.
    • In re Roy J. Mankovitz, Serial No. 77000589 (TTAB 2009)
      • Indeed, while the board has found in the NANTUCKET NECTARS case that the products did not have to be made on the island of Nantucket in order to establish a goods/place relationship, the applicant in that case had a substantial presence in that place. In re Nantucket Allserve Inc., 28 USPQ2d 1144, 1145 (TTAB 1993) ("While it is true that applicant's NANTUCKET NECTARS soft drinks are manufactured in Worcester, Massachusetts, applicant's corporate headquarters and, perhaps more importantly, applicant's center for research and development are located on Nantucket. Thus, a principal origin, if not the principal origin, of applicant's products is Nantucket") (citation to record omitted). See also In re Steel House, Inc., 206 USPQ 956 (TTAB 1980) ("San Jose" held to be geographically descriptive for applicant's services (retail store services for ornamental metal) when applicant's place of business and its services are in San Jose, California).
  • Test for finding a mark is primarily geographically descriptive under Section 2(e)(2).
    • In re Roy J. Mankovitz, Serial No. 77000589 (TTAB 2009)
      • "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." In re Spirits of New Merced LLC, 85 USPQ2d 1614, 1616 (TTAB 2007). See also In re Brouwerij Nacional Balashi NV, 80 USPQ2d 1820, 1821 (TTAB 2006); In re Handler Fenton Westerns, Inc., 214 USPQ 848, 849-50 (TTAB 1982); and TMEP 1210.01(a) (5th ed. Sept. 2007) (Test for geographically descriptive marks: (1) the primary significance of the mark is a generally known geographic location; (2) the goods or services originate in the place identified in the mark; and (3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark).
  • Case Finding: GRAND CANYON WEST is primarily geographically descriptive of applicant's services under Trademark Act Section 2(e)(2).
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008 (TTAB 2008)
      • Applicant also argues that it owns and controls access to the site associated with GRAND CANYON WEST, as in the Pebble Beach case. In fact, we conclude that the record supports applicant's position on both points. However, there is a fundamental difference between the mark at issue here and the mark in the Pebble Beach case. Unlike the mark 17 MILE DRIVE, GRAND CANYON WEST consists of two terms GRAND CANYON and WEST which had geographical significance before applicant adopted the mark. Although applicant "coined" the composite GRAND CANYON WEST in the sense that applicant was the first to use the term, nevertheless, the composite, from its inception, described a geographical place. Furthermore, the fact that applicant uses GRAND CANYON WEST to identify a property which it owns and controls does not, by itself, remove it from the category of those terms which are "primarily geographically descriptive" under Section 2(e)(2). Accordingly, we conclude that GRAND CANYON WEST is primarily geographically descriptive of applicant's services under Trademark Act Section 2(e)(2).
  • Discussion of cases where the marks where not primarily geographically descriptive.
    • In re Roy J. Mankovitz, Serial No. 77000589 (TTAB 2009)
      • Accord In re Gale Hayman Inc., 15 USPQ2d 1478, 1479 (TTAB 1990) (footnote omitted):
        The mere fact that applicant's principal offices are in Century City, close to Sunset Boulevard, does not mandate a finding that a goods/place association should be presumed. Sunset Boulevard itself would have to be associated with the products in such a way that the consuming public would be likely to assume that Sunset Boulevard was the place in which the perfume and cologne originated. Nothing in the record, however, indicates or even suggests that purchasers would believe that Sunset Boulevard was the place of manufacture or production of the perfume and cologne. Indeed, there is no indication that any perfume or cologne is manufactured or produced on Sunset Boulevard.
        See also West End Brewing Co of Utica, N.Y. v. South Australian Brewing Co., 2 USPQ2d 1306, 1309 n.4 (TTAB 1987) ("Applicant contends that the term 'WEST END' is primarily geographically descriptive as applied to opposer's beer and that opposer has failed to prove secondary meaning. The only evidence offered in support of this contention is that opposer's plant is located in the west side, or 'west end,' of the city of Utica, New York. This evidentiary showing falls far short of what would be necessary, under the case law, to establish that this term, as applied to opposer's beer products, is primarily geographically descriptive of them").
In re Roy J. Mankovitz, Serial No. 77000589 (TTAB 2009) In re Cheezwhse.com, Inc., Serial No. 78694122, (TTAB 2008) Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008 (TTAB 2008) In re Brouwerij Nacional Balashi NV, Serial No. 78304942, (TTAB 2006) In re Joint-Stock Company "Baik", Serial No. 78341041, (TTAB 2006) In re Trans Continental Records, Inc., Serial No. 75/628,844, (TTAB 2002) In re JT Tobacconists, Serial No. 75/598,351, (TTAB 2001) In re Jose Ignacio Guisado Urbano, Serial No. 74/441,447, (TTAB 1999) Grand Total
In re Spirits of New Merced LLC, 85 USPQ2d 1614 (TTAB 2007) 2
In re Brouwerij Nacional Balashi NV, 80 USPQ2d 1820 (TTAB 2006) 1
In re Joint-Stock Co. "Baik", 80 USPQ2d 1305 (TTAB 2006) 2
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) 2
In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001) 5
In re Urbano, 51 USPQ2d 1776 (TTAB 1999) 1
In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998) 2
In re U.S. Cargo Inc., 49 USPQ2d 1702 (TTAB 1998) 1
In re MCO Properties Inc., 38 USPQ2d 1154 (TTAB 1995) 3
In re Harvey & Sons Ltd., 32 USPQ2d 1451 (TTAB 1994) 1
In re John Harvey & Sons Ltd., 32 USPQ2d 1451 (TTAB 1994) 1
University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385 (TTAB 1994) 4
In re Nantucket Allserve Inc., 28 USPQ2d 1144 (TTAB 1993) 2
In re Compagnie Generale Maritime, 993 F.2d 841, 26 USPQ2d 1652 (Fed. Cir. 1993) 1
In re Chalk's Int'l Airlines Inc., 21 USPQ2d 1637 (TTAB 1991) 1
In re Gale Hayman Inc., 15 USPQ2d 1478 (TTAB 1990) 1
Burke-Parsons-Bowlby v. Appalachian Log Homes, 871 F.2d 590, 10 USPQ2d 1443 (6th Cir. 1989) 1
In re California Pizza Kitchen Inc., 10 USPQ2d 1704 (TTAB 1988) 6
ConAgra Inc. v. Saavedra, 4 USPQ2d 1245 (TTAB 1987) 1
In re Societa Generale des Eaux Minerals de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987) 8
West End Brewing Co of Utica, N.Y. v. South Australian Brewing Co., 2 USPQ2d 1306 (TTAB 1987) 1
In re BankAmerica Corporation, 231 USPQ 873 (TTAB 1986) 3
In re Cambridge Digital Systems, 1 USPQ2d 1659 (TTAB 1986) 3
In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998) 1
In re Cookie Kitchen Inc., 228 USPQ 873 (TTAB 1986) 1
In re Opryland USA Inc., 1 USPQ2d 1409 (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) 1
In re Bavaria St. Pauli Brauerei AG, 222 USPQ 926 (TTAB 1984) 1
In re Brauerei Aying Franz Inselkammer KG, 217 USPQ 73, 75 (TTAB 1983) 1
In re Consolidated Foods Corp., 218 USPQ 184 (TTAB 1983) 1
In re Handler Fenton Westerns Inc., 214 USPQ 848 (TTAB 1982) 4
In re Nantucket, 677 F.2d 95, 213 USPQ 889 (CCPA 1982) 1
In re Steel House, Inc., 206 USPQ 956 (TTAB 1980) 1
Ex Parte La Union Agricola Sociedad Anonima, 73 USPQ 233 (ComrPats 1947) 1
Grand Total 16 3 7 17 9 6 8 3 69

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.