American Home Improvement Products, Inc.

Trademark Trial and Appeal Board

Nov 4, 1998

No. 75061117 (T.T.A.B. Nov. 4, 1998)

Paper No. 10
DEB
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 11.4.98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re American Home Improvement Products, Inc.
________
Serial No. 75/061,117
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Diane R. Meyers of Eckert Seamans Cherin & Mellott, LLC for
Applicant.
Cindy B. Greenbaum, Trademark Examining Attorney, Law
Office 104 (Sidney Moskowitz, Managing Attorney).
_______
Before Cissel, Wendel and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Applicant, American Home Improvement Products, Inc., a
Pennsylvania corporation, has filed an application for
registration of the mark "AMERICAN HOMEPRO" for
"distributorships of home improvement products such as windows,
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doors, awnings, patio covers, patio enclosures, vinyl siding and
kitchen cabinets."1
The Trademark Examining Attorney issued a final refusal to
register based upon Section 6(a) of the Trademark Act, 15 U.S.C.
§1056(a), on the ground that applicant has refused to comply
with the requirement for a disclaimer of the word “AMERICAN.”
She takes the position that the word “AMERICAN” is nothing more
than geographically descriptive matter under Section 2(e)(2) of
the Lanham Act, 15 U.S.C. §1052(e)(2), and therefore that it
must be disclaimed prior to the issuance of a federal trademark
registration.
The central question before the Board in this case arises
under §2(e)(2) of the Trademark Act. As pointed out in TMEP
§1210.08(a), there is no “simple or mechanical answer to the
question of how to treat ‘AMERICA’ or ‘AMERICAN’ in a mark.”
The issue is whether “AMERICAN” in this context primarily
denotes the United States origin or scope of the services as the
Trademark Examining Attorney argues, or whether the term is used
in a nebulous or suggestive manner, as applicant argues.
As applicant notes, we must look at this mark, "AMERICAN
HOMEPRO," in its entirety. In the context of this composite
mark, “AMERICAN” is the first word of a two-word mark, followed

1 Serial No. 75/061,117, in International Class 35, filed
February 22, 1996, based upon an allegation of a bona fide
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by the word “HOMEPRO.” Since applicant intends to provide the
services of a wholesale distributor of home products under the
mark, the word “HOMEPRO” appears to be a coined word, suggestive
of “home products,” “home professional,” or the like.
Applicant argues that if one examines this mark in its
entirety, the two words must be viewed together as integral
components. According to applicant, the word “AMERICAN” has
lost its geographic significance when it is combined with the
word “HOMEPRO.” In a conclusory fashion, applicant states that
the overall commercial impression of the mark creates something
nebulous and new. However, nowhere do we find a satisfying
explanation of the new meaning engendered by combining the words
“AMERICAN” and “HOMEPRO.”
Accordingly, following the principles summarized in the
cases cited by the Trademark Examining Attorney, we find that
the word "AMERICAN" is used in the instant mark in a way that
primarily denotes the United States origin or scope of
applicant’s services.2

intention to use the mark in commerce.
2 See In re BankAmerica Corp., 231 USPQ 873 (TTAB 1986) (BANK
OF AMERICA held primarily geographically descriptive); Finance
Co. of America v. BankAmerica Corp., 205 USPQ 1016 (TTAB 1979,
amended 1980) (THE FINANCE COMPANY OF AMERICA held primarily
geographically descriptive); American Paper & Plastic Products,
Inc. v. American Automatic Vending Corp., 152 USPQ 117 (TTAB
1966) (AMERICAN AUTOMATIC VENDING held primarily geographically
descriptive). Each of these cases, like the instant case,
exhibits an "unadorned, simple word AMERICAN." McCarthy on
Trademarks and Unfair Competition, §14:11 (4th ed. 1998).
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In the cases cited by applicant, the context of each
composite mark provides a new, non-geographical meaning for the
word “AMERICAN”3 (e.g., AMERICAN GIRL, ALL AMERICAN, GREAT
AMERICAN, etc.). As discussed in these cases, the mere
introduction of a subtle nuance may remove a mark from the
primarily geographically descriptive category.4 That is, the
overall commercial impression is no longer primarily geographic
due to a new double meaning or another suggestive meaning. See
also TMEP §1210.08(a)(2).
We find no new or double meanings, however, in the instant
mark. Applicant’s mark contains a geographical component,
“AMERICAN,” that is primarily geographically descriptive of the
services within the meaning of §2(e)(2) of the Act.
For purposes of §6(a) of the Lanham Act, we must also
decide whether this composite represents a “unitary” mark. A

3 When U.S.-based companies use "AMERICA" or "AMERICAN" in
the context of a composite mark, it is sometimes not deemed to be
primarily geographically descriptive, provided the word takes on
an arbitrary meaning. See Hamilton-Brown Shoe Co. v. Wolf
Brothers & Co., 240 U.S. 251 (1916) (THE AMERICAN GIRL held not
primarily geographically descriptive for shoes); In re Jim
Crockett Promotions Inc., 5 USPQ2d 1455 (TTAB 1987) (THE GREAT
AMERICAN BASH held not primarily geographically descriptive of
wrestling exhibitions).
4 In the context of “THE AMERICAN CAFÉ,” the word “AMERICAN”
was deemed “nebulous,” given the history of cuisine in the United
States, and the Board questioned whether “AMERICAN” would even be
seen here as modifying the word “CAFÉ.” See Holiday Inns, Inc.,
v. Monolith Enterprises, 212 USPQ 949, 950 (TTAB 1981).
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unitary mark is not divided for purposes of disclaiming
individual parts. We must determine whether these two words are
so integrated that they cannot be regarded as separable
elements, or whether “AMERICAN” is a separable component.
Inasmuch as the combination of “AMERICAN” and “HOMEPRO” does not
create any new, double meaning, we find that the geographic
component, “AMERICAN,” is a separable feature of this mark.
Decision: In view of the foregoing, the requirement for a
disclaimer of the term “AMERICAN,” is affirmed and, in the
absence of a disclaimer, registration is refused. In accordance
with Trademark Rule 2.142(g), if a disclaimer is filed within
twenty days of the mailing date of this decision, we will set
aside this decision and the mark will be published for
opposition.
R. F. Cissel
H. R. Wendel
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial and
Appeal Board

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