Air New Zealand Ltd.

Trademark Trial and Appeal Board

Nov 9, 2018

No. 79192386 (T.T.A.B. Nov. 9, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: November 9, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Air New Zealand Ltd.
_____

Serial No. 79192386
_____

William J. Seiter of Seiter Legal Studio,
for Air New Zealand Ltd.
Ryan Cianci, Trademark Examining Attorney, Law Office 116,
Christine Cooper, Managing Attorney.
_____

Before Kuhlke, Shaw and Heasley,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
Air New Zealand Ltd. (“Applicant”), based in Auckland, New Zealand, seeks
registration on the Principal Register of the mark AIR NZ (in standard characters,
with “AIR” disclaimed) for airline-related travel services, specifically
Arranging and conducting incentive loyalty rewards
programs to promote the sale of airline tickets;
Membership privileges programs, namely, membership
club services in the nature of providing discounts to
members in the field of travel; Sales promotion of travel for
others; Consumer loyalty services for commercial,
promotional, and/or advertising purposes, namely,
administration of frequent flyer programs that allows
Serial No. 79192386
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members to redeem miles for points and artificial currency
in International Class 35;
Airline transportation services; Shipping of goods and
freight by air; passenger transport; provision of airport
facilities, namely, airport services featuring transit lounge
facilities for passenger relaxation; Travel agency services,
namely, providing information about tariffs, timetables,
and methods of transport for goods and people for travel
purposes; Travel ticket reservation services; Travel ticket
upgrade reservation services; Planning travel and
transport via electronic contact and communication with
customers, namely, providing a website for the
arrangement and booking of travel; Booking travel and
transport via electronic contact and communication with
customers, namely, providing a website for the
arrangement and booking of travel; Travel ticket
reservation services for airline frequent flyer programs in
International Class 39; and
Services relating to the provision of accommodation,
namely, booking of temporary accommodation; Provision of
temporary accommodation services, namely, making
bookings and reservation for others for accommodations;
Services for the booking and reserving of temporary
accommodation, namely, providing online reservations and
bookings for temporary accommodation in International
Class 43.1
The Trademark Examining Attorney initially refused registration of Applicant’s
mark on the ground that AIR NZ is primarily geographically descriptive of the
identified services under Section 2(e)(2) of the Trademark Act, 15 U.S.C. § 1052(e)(2),
stating, “The primary significance of ‘NZ’ is a generally known geographic location,

1 Application Serial No. 79192386 was filed on February 18, 2016, seeking an extension of
protection of International Registration No. 1310619 under Section 66(a) of the Trademark
Act, 15 U.S.C. § 1141f (Madrid Protocol).

Page references to the application record are to the .pdf version of the USPTO’s Trademark
Status & Document Retrieval (TSDR) system. References to the briefs on appeal are to the
Board’s TTABVUE docket system.
Serial No. 79192386
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namely, New Zealand. … The applicant’s address is in New Zealand and the applicant
offers flights to and from New Zealand.”2 “Applicant is advised that, if the application
is amended to seek registration on the Principal Register under Trademark Act
Section 2(f), applicant will be required to disclaim “AIR” because such wording
appears to be generic in the context of applicant’s services.”3 Applicant accordingly
amended its application, disclaiming “AIR” and claiming that AIR NZ had acquired
distinctiveness based on Applicant’s ownership of the active prior registered mark
AIR NEW ZEALAND for the same or related airline-related travel services.4 15
U.S.C. § 1052(f).
The Examining Attorney refused to accept Applicant’s prior registration as proof
that AIR NZ had acquired distinctiveness, stating that, “[a] claim of acquired
distinctiveness may be based on an applicant’s ownership of one or more active prior
registrations of the same mark on the Principal Register. 37 C.F.R. §2.41(a)(1); TMEP
§1212.04.” However, “[i]n the present case, the applied-for mark and the mark in the

2 Sept. 30, 2016 Office Action TSDR p. 2.
3 Id. at 3.
4 March 6, 2017 Response to Office Action TSDR pp. 4, 9, 12, citing Reg. No. 4148227, issued
on May 29, 2012 under Section 2(f), 15 U.S.C. § 1052(f), for “Airline transportation services;
transportation and delivery of goods and people by air; storage of goods; providing
information and data relating to the transportation of goods and people; tourist agency
services, namely, arranging excursions for tourists; providing transportation information
about tariffs, timetables and methods of transport for goods and people; arranging of tours
and the operation of tourist offices; making reservations and bookings for airline
transportation services via television, the Internet and electronic mail; all the aforesaid being
in relation to airline services; reservation services for travelers, namely, travel and tour ticket
reservation service” in International Class 39 and “Providing temporary accommodation, food
and beverages; travel agency services, namely, making reservations for temporary
accommodations and meals” in International Class 43. Combined declaration of use and
incontestability under Sections 8 and 15 accepted and acknowledged on May 21, 2018.
Serial No. 79192386
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prior registration are not the same mark, and thus are not legal equivalents, because
while the acronym ‘NZ’ commonly refers to ‘New Zealand,’ it can also reference other
terms.”5 Applicant pointed out the incongruity in stating that the primary
significance of ‘NZ’ is New Zealand, but that AIR NZ does not convey the same
commercial impression to the consuming public as AIR NEW ZEALAND.6 “[I]t is
inconceivable that a consumer who comes across the Applicant’s mark ‘AIR NZ’ is
going to think of any other airline besides ‘Air New Zealand’ or any other airline
company besides the Applicant,” it stated.7
The Examining Attorney nonetheless maintained and made final the refusal to
register on the ground that AIR NZ is primarily geographically descriptive of the
identified services and has not acquired distinctiveness. When the refusal was made
final, Applicant appealed and requested reconsideration. After the Examining
Attorney denied the request for reconsideration, the appeal was resumed. We reverse
the refusal to register.
I. Primarily Geographically Descriptive

The Trademark Act provides that “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-- … [c]onsists of a mark
which … when used on or in connection with the goods of the applicant is primarily

5 March 28, 2017 Office Action TSDR p. 2.
6 July 17, 2017 Response to Office Action TSDR pp. 9-10.
7 Id. at 9.
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geographically descriptive of them….” 15 U.S.C. § 1052(e)(2). Section three of the Act,
15 U.S.C. § 1053, extends this provision to service marks. In re London & Edinburgh
Ins. Grp. Ltd., 36 USPQ2d 1367, 1368 (TTAB 1995).
The test for determining whether a term is primarily geographically descriptive
is whether (1) the primary significance of the term in the mark sought to be registered
is the name of a place generally known to the public, (2) the public would make an
association between the goods or services and the place named in the mark, that is,
believe that the goods or services for which the mark is sought to be registered
originate in that place, and (3) the source of the goods or services is the geographic
region named in the mark. In re Newbridge Cutlery Co., 776 F.3d 854, 113 USPQ2d
1445, 1448-49 (Fed. Cir. 2015) (citing In re Societe Generale des Eaux Minerals de
Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450, 1451-52 (Fed. Cir. 1987)). “The second
prong, or services-place association, can be presumed when the services do in fact
emanate from the place named in the mark.” In re American Furniture Warehouse
Co., 126 USPQ2d 1400, 1403 (TTAB 2018) (citing In re JT Tobacconists, 59 USPQ2d
1080, 1082 (TTAB 2001) (“[W]here 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.”)).
Here, it is clear that, absent acquired distinctiveness, AIR NZ is primarily
geographically descriptive of Applicant’s airline/travel services. As the Examining
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Attorney has established, the primary significance of ‘NZ’ is a generally known
geographic location, namely, New Zealand.8 See In re Charles S. Loeb Pipes, Inc., 190
USPQ 238, 246 (TTAB 1975) (“Nicknames and even maps and geographical
abbreviations used as trademarks, have, over the years, been treated under the
common law and statutory interpretation in the same manner as ordinary
geographical marks.”). The second prong, of services-place association, can be
presumed because Applicant’s address is in New Zealand and it offers flights to and
from New Zealand.9 See In re Chalk’s Int’l Airlines Inc., 21 USPQ2d 1637, 1639 (TTAB
1991) (“[I]t is not a coincidence that applicant selected ‘PARADISE ISLAND
AIRLINES’ to identify its air transportation services to and from Paradise Island.”).
Applicant does not dispute these facts: “Regarding the term NZ, what the
Examining Attorney said about it in his first office action was true: ‘The primary
significance of “NZ” is a generally known geographic location, namely, New Zealand.’
He proffered very credible evidence from multiple sources in support of this fact.”10
Applicant’s addition of the disclaimed generic or highly descriptive term “AIR” for its
airline-related services does not detract from the primary geographical significance

8 In support of this point, the Examining Attorney adduces evidence from the Acronym
Finder, www.AcronymFinder.com/NZ 9/28/2016, showing that the first two meanings of “NZ”
are New Zealand and Applicant’s airline code; Columbia Gazetteer of the World,
www.ColumbiaGazetteer.org 9/28/2016, the Oxford Dictionary, www. OxfordDictionaries
.com 9/28/3016, and Wikipedia, www.en.Wikipedia.org 9/28/2016, in which “NZ” redirects to
the article on New Zealand. Sept. 30, 2016 Office Action TSDR pp. 11-15. See also Aug. 7,
2017 Office Action TSDR p. 3.
9 See Applicant’s listing of flight departures from cities in New Zealand, including Auckland,
Christchurch, Dunedin, Queenstown, and Wellington. www.AirNewZealand.com 9/28/2016,
Sept. 30, 2016 Office Action TSDR p. 16.
10 Applicant’s reply brief, 10 TTABVUE 5.
Serial No. 79192386
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of the mark as a whole. See In re Chalk’s Int’l Airlines, 21 USPQ2d at 1639 (“The
addition of the generic and disclaimed word ‘AIRLINES’ to applicant’s mark cannot
avoid the refusal.”) cited in TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP)
§ 1210.02(c)(ii) (Oct. 2018). Moreover, because Applicant has made an unconditional
claim of acquired distinctiveness under Section 2(f), it has effectively conceded that
the proposed mark is primarily geographically descriptive. See, e.g., Yamaha Int’l
Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988)
(“Where, as here, an applicant seeks a registration based on acquired distinctiveness
under Section 2(f), the statute accepts a lack of distinctiveness as an established
fact.”); see also Grand Canyon W. Ranch, LLC v. Hualapai Tribe, 88 USPQ2d 1501,
1504 (TTAB 2008); TMEP § 1212.02(b).
We find, then, that Applicant’s mark is primarily geographically descriptive of its
services under Section 2(e)(2), and thus not registrable on the Principal Register
absent proof of acquired distinctiveness.
II. Acquired Distinctiveness

A. Proving Acquired Distinctiveness

Section 2(f) of the Lanham Act provides, in part, that “nothing herein shall prevent
the registration of a mark used by the applicant which has become distinctive of the
applicant’s goods in commerce.” 15 U.S.C. § 1052(f) quoted in Coach Services Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1729 (Fed. Cir. 2012).
“Even though geographic terms are generally considered not to be inherently
distinctive, they are capable of acquiring distinctiveness. See, e.g., Boston Beer Co. v.
Serial No. 79192386
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Slesar Bros. Brewing Co., 9 F.3d 175, 28 USPQ2d 1778, 1783 (1st Cir. 1993)
(‘secondary meaning has been established in a geographically descriptive mark where
the mark no longer causes the public to associate the goods [or services] with a
particular place, but to associate the goods [or services] with a particular source.’)….”
In re Society of Health and Physical Educators, 127 USPQ2d 1584, 1588-89 (TTAB
2018) (collecting cases where primarily geographically descriptive terms acquired
distinctiveness).
The burden of establishing that a mark has acquired distinctiveness is on the
Applicant. See Yamaha v. Hoshino Gakki Co., 6 USPQ2d at 1006; In re LC
Trademarks, Inc., 121 USPQ2d 1197, 1199 (TTAB 2016). This burden increases with
the degree of descriptiveness: the greater the degree of descriptiveness, the greater
the burden. Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., __ F.3d __, 128 USPQ2d
1370, 1378 (Fed. Cir. 2018); In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420,
1424 (Fed. Cir. 2005). This is because “[h]ighly descriptive terms … are less likely to
be perceived as trademarks and more likely to be useful to competing sellers than are
less descriptive terms. More substantial evidence of acquired distinctiveness thus will
ordinarily be required to establish that such terms truly function as source-
indicators.” Alcatraz Media, Inc. v. Watermark Cruises, 107 USPQ2d 1750, 1767
(TTAB 2013) (quoting In re Greenliant Sys. Ltd., 97 USPQ2d 1078, 1085 (TTAB
2010)).
The issue of acquired distinctiveness is a question of fact. In re Compagnie
Generale Mar., 993 F.2d 841, 26 USPQ2d 1652, 1655 (Fed. Cir. 1993). The statute is
Serial No. 79192386
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silent as to the evidence required under Section 2(f), except for suggesting that
substantially exclusive use for a period of five years immediately preceding filing of
an application may be considered prima facie evidence of acquired distinctiveness. 15
U.S.C. § 1052(f); In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417,
422 (Fed. Cir. 1985). Trademark Rule 2.41 fills in this gap for trademarks and service
marks, stating in relevant part that “[i]n appropriate cases, ownership of one or more
active prior registrations on the Principal Register or under the Trademark Act of
1905 of the same mark may be accepted as prima facie evidence of distinctiveness if
the goods or services are sufficiently similar to the goods or services in the application;
however, further evidence may be required.” 37 C.F.R. § 2.41(a)(1), quoted in In re
Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir.
2001); In re Olin Corp., 124 USPQ2d 1327, 1334 (TTAB 2017); TMEP § 1212.04.
B. The Applicant’s and Examining Attorney’s Arguments

As indicated, Applicant relies on this provision, claiming that AIR NZ has
acquired distinctiveness based on Applicant’s ownership of active prior Registration
No. 4148227 for the mark AIR NEW ZEALAND, essentially for airline services. That
registration issued on May 29, 2012 based on acquired distinctiveness under Section
2(f); Applicant’s combined declaration of use and incontestability under Sections 8
and 15 was accepted and acknowledged in May 2018.11 Applicant maintains that AIR
NEW ZEALAND is the legal equivalent of AIR NZ.12 “For purposes of Trademark

11 See n. 4 supra.
12 Id.
Serial No. 79192386
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Rule 2.41(a)(1), the term ‘same mark’ does not mean identical mark,” Applicant
contends. “A proposed mark is the ‘same mark’ as a previously registered mark if it
is the ‘legal equivalent’ of such mark,” that is, “if it creates the same, continuing
commercial impression such that the consumer would consider them both the same
mark.”13
In support of this claimed equivalence, Applicant alludes to evidence it adduced
in its responses to Office Actions, and attaches copies of this previously-submitted
evidence as exhibits to its main brief on appeal.14 The Board discourages the practice
of attaching copies of evidence submitted during examination to appeal briefs. See,
e.g., In re Allegiance Staffing, 115 USPQ2d 1319, 1323 (TTAB 2015); TBMP § 1203.01
(June 2018). Nonetheless, the Examining Attorney does not object to these exhibits,
and refers to them in his brief, so we shall give them due consideration. The exhibits
consist of:
A. Google® search engine summary of results indicating that a search for “NZ”
yields the result “New Zealand.”15 For example:

13 Applicant’s brief, 7 TTABVUE 10, quoting In re Dial-A-Mattress, 57 USPQ2d at 1812.
14 7 TTABVUE 20-135.
15 7 TTABVUE 20-77.
Serial No. 79192386
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16
B. Dictionary entries from seven online dictionaries, offered to show that the only
definition of “NZ” is “New Zealand.” For example:
• Merriam-Webster “Definition of NZ “ New Zealand;
• Oxford Advanced American Dictionary: “NZ abbreviation – New Zealand”;
• Webster’s New World College Dictionary: “NZ in American or N Zeal – New
Zealand”;
• Macmillan Dictionary: “N.Z. … New Zealand”;

16 7 TTABVUE 20.
Serial No. 79192386
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• Dictionary.com: “N.Z. or N. Zeal 1. New Zealand” (citing Random House
Dictionary);17
Applicant likens this dictionary evidence to similar evidence adduced in In re
Thomas Nelson, Inc., 97 USPQ2d 1712 (TTAB 2011) (finding “NKJV” substantially
synonymous with the term “New King James Version” of the Bible).18
C. An Airline and Airport code search issued by the International Air Transport
Association (IATA), the trade association for the world’s airlines, indicating that “NZ”
is the airline code for Applicant “Air New Zealand Limited.”19
D-F. Webpages from Acronym.com indicating that “NZ” is the country code for the
New Zealand Internet top level domain.20
G. Country abbreviations issued by SustainableSources.com indicating that “NZ”
denotes “New Zealand.”21
The Examining Attorney argues that the two marks, AIR NZ and AIR NEW
ZEALAND, are not legal equivalents. Although he adduced evidence during the
course of examination showing that “[t]he primary significance of ‘NZ’ is a generally
known geographic location, namely, New Zealand,”22 that same evidence, he later
stated, shows that “NZ” can have other meanings in other contexts:

17 7 TTABVUE 80 -111.
18 7 TTABVUE 14-15.
19 7 TTABVUE 114-120.
20 7 TTABVUE 122-129.
21 7 TTABVUE 134-135.
22 Aug. 7, 2017 Office Action TSDR p. 3.
Serial No. 79192386
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[w]hile the acronym NZ commonly refers to New Zealand, it can also
reference other terms and creates a different commercial impression. See
attached evidence from the March 28th Office Action. Additionally, third-
parties use NZ not to reference to New Zealand. An algebra book shows NZ
means “not zero,” The Neutral Zone is an online store and uses NZ to
reference its website, and Sporting Charts shows NZ is used to explain
neutral zone starts.23

The evidence the Examining Attorney submitted from AcronymFinder.com/NZ is
as follows:

24

23 Id. at TSDR p. 4.
24 Sept. 30, 2016 Office Action TSDR p. 11.
Serial No. 79192386
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In his brief, though, the Examining Attorney focuses not on the evidence he
submitted during the course of examination, but on minimizing the probative value
of Applicant’s evidence. Applicant’s Google® search summary of results have minimal
probative value, he contends, because they do not show the websites, which would
show the term “NZ” in context.25 See In re Star Belly Stitcher, Inc., 107 USPQ2d 2059,
2062 n. 4 (TTAB 2013). The IATA airline codes are irrelevant, he contends, because
there is no proof that the code is displayed to airline travelers, and it is speculative
to presume that these travelers would know that the IATA code for New Zealand is
NZ.26 Applicant has provided dictionary and acronym-defining evidence, as in In re
Nelson, the Examining Attorney admits; but the applicant in Nelson, in addition to
dictionary and acronym-defining evidence, provided declarations from corporate
officers, retailers, and end consumers attesting that “NKJV” was substantially
synonymous with the term “New King James Version.” Here, the Examining Attorney
argues, Applicant has provided no corollary evidence showing that consumers will
interpret “NZ” as “NEW ZEALAND” when used in connection with airline services.27
In the crowded airline industry, he asserts, it is common for service marks to feature
similar terms that have the same connotation but are not legal equivalents, such as
Air China and China Airlines, or Air Japan and Japan Airlines, or US Air and
American Airlines. And Applicant’s exhibit G, a screenshot showing a list of country

25 Examining Attorney’s brief, 9 TTABVUE 9.
26 Id., 9 TTABVUE 11.
27 Id. 9 TTABVUE 11-12.
Serial No. 79192386
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abbreviations from a webpage about green, environmentally sustainable building
information, does not show how consumers will interpret “NZ” in connection with
airline services.28 Without evidence showing consumers will interpret “AIR NZ” as
the equivalent of “AIR NEW ZEALAND” in connection with airline services, he
concludes, it would be inappropriate to grant Applicant’s claim of acquired
distinctiveness based on its prior registration.29
In reply, Applicant notes: The Examining Attorney’s evidence adduced during the
course of examination was so “skimpy, trivial and lacking in relevance” that he
scarcely refers to it in his brief.30 The Examining Attorney does not dispute that the
services identified in the subject application are the same as or are related to those
in its prior registration.31 The evidence the Examining Attorney submitted from
AcronymFinder.com/NZ primarily defined “NZ” as New Zealand; and the remaining
definitions were irrelevant to U.S. airline passengers.32 Applicant’s Google® search
engine summaries have probative value, it contends, because they constitute evidence
of public exposure. See TMEP § 1208.03.33 The IATA airline code document states
that “IATA codes are an integral part of the travel industry, and essential for the
identification of an airline, its destinations and its traffic documents. They are also

28 Id. 9 TTABVUE 11.
29 Id., 9 TTABVUE 12-13.
30 Applicant’s reply brief, 10 TTABVUE 7.
31 Id., 10 TTABVUE 9.
32 Id., 10 TTABVUE 7-8.
33 Id., 10 TTABVUE 6.
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fundamental to the smooth running of hundreds of electronic applications which have
been built around these coding systems for passenger and cargo traffic purposes.”34
Furthermore, Applicant’s dictionary and acronym-defining evidence establish that
“NZ” has only one definition, “New Zealand,” in American English. Although this
evidence was not as voluminous as that presented in Nelson, Applicant maintains
that it has, on the whole, presented “extensive evidence” that the initialism means
the country name.35 The Examining Attorney’s assertion that similar airline names,
such as “Air China and China Airlines,” are common in the airline industry is not
supported by any evidence in his brief or his Office Actions, Applicant notes; and
unlike the Examining Attorney’s examples, AIR NZ has the same structure as AIR
NEW ZEALAND, with AIR preceding the country designation.36 For these reasons,
Applicant concludes, AIR NZ has acquired distinctiveness by virtue of its legal
equivalence with AIR NEW ZEALAND, its prior active registration.
C. Analysis

As discussed above, Trademark Rule 2.41(a)(1), 37 C.F.R. § 2.41(a)(1), provides
that the examining attorney may accept, as prima facie evidence of acquired
distinctiveness, ownership by the applicant of one or more active prior registrations
of the same mark on the Principal Register or under the Act of 1905. A proposed mark
is the “same mark” as a previously registered mark for the purpose of 37 C.F.R. §

34 Id., 10 TTABVUE 12, quoting from 7 TTABVUE 118.
35 Id., 10 TTABVUE 10.
36 Id., 10 TTABVUE 4.
Serial No. 79192386
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2.41(a)(1) if it is the “legal equivalent” of that mark. In re Dial-A-Mattress, 57
USPQ2d at 1812. “A mark is the legal equivalent of another if it creates the same,
continuing commercial impression such that the consumer would consider them both
the same mark.” Id.; see also In re Society of Health and Physical Educators, 127
USPQ2d at 1588. The goods or services identified in a prior registration must be
“sufficiently similar” to those in an application to be accepted as prima facie evidence
of distinctiveness. In re Olin, 124 USPQ2d at 1333-34.
Here, there is no dispute that the two marks are, or were, highly descriptive of
those services―airline services emanating from New Zealand. So the burden of
establishing acquired distinctiveness is commensurately high for Applicant. See
Grand Canyon W. Ranch v. Hualapai Tribe, 88 USPQ2d at 1507 (finding that
“GRAND CANYON WEST is highly descriptive of the identified services.
Consequently, applicant faces a heavy burden in establishing acquired
distinctiveness for the mark.”). Even so, Applicant’s prior registered mark, AIR NEW
ZEALAND, registered six years ago under Section 2(f), based on acquired
distinctiveness.37
There is also no dispute that Applicant’s prior registration and current application
recite essentially the same airline services, i.e., are “sufficiently similar.” The issue,
then, is whether consumers of those same airline services would view AIR NZ as
conveying the same, continuing commercial impression. We find that they would.
“[N]icknames and even abbreviations and maps of geographical areas and the name

37 Reg. No. 4148227, issued under Section 2(f), 15 U.S.C. § 1052(f),
Serial No. 79192386
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of the geographical area that they identify are, for purposes of registration, identical,
and … the same criteria for registration must necessarily apply thereto.” In re
Charles S. Loeb Pipes, Inc., 190 USPQ 238, 246 (TTAB 1975) (emphasis added); see
also In re Spirits of New Merced LLC, 85 USPQ2d 1614, 1617 (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.”) (emphasis added).
The evidence adduced by both the Examining Attorney and Applicant establishes
that “NZ,” as used in connection with Applicant’s services, means New Zealand. While
the Examining Attorney’s evidence from AcronymFinder indicates other meanings in
other contexts (such as “neutral zone” for hockey games or “non-infarcted zone” in
medical settings)38 the connotation of an abbreviation is determined in the context of
its goods or services. See, e.g., In re Nelson, 97 USPQ2d at 1716. Here, Applicant’s
applied-for mark would be viewed by consumers in the context of airline services―for
example, airline advertisements, airline ticket counters, and airline baggage claim
areas―not in the other contexts cited by the Examining Attorney. “That a term may
have other meanings in different contexts is not controlling.” In re Franklin County
Historical Society, 104 USPQ2d 1085, 1087 (TTAB 2012). Applicant’s evidence about
the IATA NZ code designation does not, standing alone, show that NZ is displayed to
airline customers, but it does show that the use of NZ as an airline code is exclusive
to Applicant in the airline service industry. Applicant also submits seven definitions

38 Sept. 30, 2016 Office Action TSDR p. 11.
Serial No. 79192386
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from American English dictionaries indicating that “NZ” has only one definition: New
Zealand. The Examining Attorney questions the strength of this evidence, compared
with that in Nelson, but does not controvert Applicant’s dictionary evidence. Also as
in Nelson, the Examining Attorney questions the probative value of Applicant’s
citation to Google® search summaries for “NZ.” It is true that the use of search
summaries has less probative value than full web pages, which would show more
context, In re Thomas Nelson, 97 USPQ2d at 1715, but Applicant’s search summaries,
such as the one displayed above,39 display some content, and may be accorded limited
probative value, to the extent that they show that “NZ” means “New Zealand.”
Furthermore, the consuming public would perceive both of Applicant’s marks,
AIR NEW ZEALAND and AIR NZ, as a whole, in the context of airline services.
“The commercial impression of a trade-mark is derived from it as a whole, not from
its elements separated and considered in detail. For this reason, it should be
considered in its entirety ….” In re Dial-A-Mattress, 57 USPQ2d at 1811 (quoting
Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 545-46 (1920)).
Taken as a whole, AIR NZ retains the same structure as AIR NEW ZEALAND, a
structure consumers would tend to recognize and associate with Applicant. Cf.
Christian Broadcasting Network, Inc. v. ABS-CBN Int’l, 84 USPQ2d 1560, 1566
(TTAB 2007) (same structure of initials recognizable). The Examining Attorney and
Applicant dispute whether the term “AIR” in Applicant’s proposed mark is generic or

39 7 TTABVUE 20.
Serial No. 79192386
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descriptive of airline services.40 For our present purposes, however, the distinction
makes no difference, “because even generic and descriptive matter may contribute to
the commercial impression of a mark in certain circumstances.” See In re Society of
Health and Physical Educators, 127 USPQ2d at 1587. And a “generic term may be
included in the claim of acquired distinctiveness as long as an accompanying
disclaimer of the generic term is provided.” In re American Furniture Warehouse, 126
USPQ2d at 1407. “AIR” is disclaimed in Applicant’s current application, just as it was
in Applicant’s prior registration, but the consuming public is unaware of that
disclaimer. See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1050
(Fed. Cir. 2018). And given the consuming public’s penchant for shortening place
names, see In re South Park Cigar Inc., 82 USPQ2d 1507, 1512 (TTAB 2007),
Applicant’s contraction of the country name NEW ZEALAND into the initialism NZ
neither adds nor subtracts anything to or from the origin-indicating significance of
AIR NEW ZEALAND. The relevant public would tend to view AIR NZ as a shorthand
version of the original mark. See In re Flex-O-Glass, Inc., 194 USPQ 203, 205-06
(TTAB 1977) (finding applicant entitled to rely on six year old registered mark in
support of claim of acquired distinctiveness; “It seems inescapable that persons
exposed to applicant’s registered mark since 1966 would, upon encountering the
instant mark when first used in 1972, be likely to accept it as the same mark or as
an inconsequential modification or modernization thereof. In other words, the marks
are, in effect, and would be recognized as one and the same mark.”).

40 Examining Attorney’s brief, 9 TTABVUE 7, Applicant’s brief, 7 TTABVUE 3.
Serial No. 79192386
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For these reasons, upon consideration of all of the relevant evidence and
arguments, including those we have not mentioned, we find that AIR NZ is the legal
equivalent of AIR NEW ZEALAND, and has acquired distinctiveness by virtue of
Applicant’s prior active registration of that mark. Because it has acquired
distinctiveness, the mark AIR NZ no longer causes the public to associate the services
with a particular place, but to associate them with a particular source: Applicant. See
In re Society of Health and Physical Educators, 127 USPQ2d at 1588-89.
Decision: The refusal to register Applicant’s mark AIR NZ under Section 2(e)(2)
of the Trademark Act on the ground that the mark is primarily geographically
descriptive is affirmed; the refusal on the ground that it has not acquired
distinctiveness under Section 2(f) is reversed. The application will be published for
opposition in due course.