Anticipate This!™ | Patent and Trademark Law Blog

In Re Spirits of New Merced, LLC.

Posted in Opinion Commentary by Mike Dockins on January 5, 2008

If the geographical significance of a term is its primary significance, the geographical place is neither obscure nor remote, and applicant’s goods are from the geographical place, a public association of the goods with the place is presumed.

(TTAB 2007, U.S. Trademark Appn. No. 78/710,805)

Spirits of New Merced, LLC (the applicant) filed an application to register the mark YOSEMITE BEER for alcoholic beer in Class 32 with the word BEER disclaimed.   The trademark examining attorney refused registration under Section 2(e)(2) of the Trademark Act on the ground that the mark is primarily geographically descriptive of the goods.  Applicant appealed and the TTAB affirmed the refusal.

yosemite2_dh4c.jpg

For a mark to be considered primarily geographically descriptive, two things must be shown. First, the mark’s primary significance is a generally known geographic location. Second, the relevant public would be likely to make a goods/place association, that is, would be likely to believe that the goods originate from the place named in the mark. If these two conditions are met and the goods actually come from the place named by or in the mark, the mark is primarily geographically descriptive.

The applicant is a brewpub in Merced, California, which is approximately 80 miles from Yosemite National Park.  In the 2(e)(2) rejection, the Examining Attorney argued that “Yosemite” is a generally known place.  Applicant argued that there is no such place as “Yosemite”; that its beer does not originate from Yosemite National Park; and that there is no connection between beer and Yosemite National Park.  The Trademark Trial and Appeal Board (TTAB) sided with with the Examining Attorney and affirmed the refusal.

In its finding, the TTAB noted that as a first part of the “primary significance” test, a mark is not primarily geographic where the geographic meaning is minor, obscure, remote, or unconnected with the goods.  The applicant argued with little support that there is no place on earth named Yosemite or Yosemite, California.  Yosemite National Park, as the record supported, is a well known region and that “Yosemite” is a commonly used nickname or shorthand for Yosemite National Park.  Furthermore, the TTAB noted that “it is well settled that a recognized nickname or other informal name for a geographic location is considered the equivalent or the official or formal name for purposes of determining registrability of the geographic term”.  The TTAB also noted that the third-party applications and cancelled registrations cited by the applicant, and were a significant portion of the records submitted by the applicant, had no probative value on the issue of registrability.  The evidence, as determined by the TTAB, is only evidence of the fact that an application or registration was filed on a certain date.

In reviewing the second factor for a 2(e)(2) refusal, the TTAB noted that 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.  The record showed that the city of Merced, where YOSEMITE BEER is produced, has a significant relationship to Yosemite National Park.  Merced has for years been known as the “Gateway to Yosemite”.  Accordingly, both prongs of the 2(e)(2) refusal were met and the refusal was affirmed.

The TTAB made two additional comments of significance. First, that 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.  Second, and related to the first, is that the issue of 2(e)(2) refusals is not whether consumers will be “confused and deceived” but rather whether applicant has a right to exclude others from using the term to describe the geographic origin of their goods and services.

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