Big Steaks, Inc.

Trademark Trial and Appeal Board

Jan 31, 2002

No. 75759404 (T.T.A.B. Jan. 31, 2002)

1/31/02

Paper No. 9
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Big Steaks, Inc.
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Serial No. 75/759,404
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Mark B. Harrison of Venable, Baetjer, Howard & Civiletti,
LLP for Big Steaks, Inc.

Linda B. Mickleburgh, Trademark Examining Attorney, Law
Office 106 (Mary Sparrow, Managing Attorney).
_______

Before Hohein, Wendel and Drost, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On July 22, 1999, Big Steaks, Inc. (applicant) filed
an intent-to-use application for the mark MANHATTAN STEAK
HOUSE (typed form) for “restaurant services” in
International Class 42. Applicant has disclaimed the words
“steak house.” On May 23, 2000, applicant filed an
Amendment to Allege Use that alleged a date of first use
and a date of first use in commerce of June 1999.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/759,404
2
The Examining Attorney ultimately refused to register
the mark on the ground that the mark is primarily
geographically deceptively misdescriptive of restaurant
services. After the refusal was made final, this appeal
followed. Applicant and the Examining Attorney have
submitted briefs. An oral argument was not requested.
The Examining Attorney submits that the primary
meaning of the mark is geographic, that New York is known
for steak houses, that it is logical to make an association
between Manhattan and New York, and that applicant’s
services do not originate in Manhattan. The Examining
Attorney asks the Board to take judicial notice1 of a
definition of “Manhattan” from Merriam-Webster’s
Geographical Dictionary, 3rd edition, which reads in part:
[C]hartered as one of the five boroughs comprising the
city of New York 1898; containing main financial and
commercial and important residential sections of the
city.

The Examining Attorney also included printouts from an
electronic database to show that there is a type of steak
house referred to as a New York style steak house and noted
that applicant’s specimens refer to a “New York Style”
Valentine’s Day Celebration in applicant’s restaurant.

1 We do take judicial notice of this definition. University Of
Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594,
596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983).
Ser. No. 75/759,404
3
Based on this evidence, the Examining Attorney concludes
that the mark is primary deceptively geographically
descriptive for applicant’s steak house restaurant services
that do not originate in Manhattan, New York.
In response, applicant argues that there is no
evidence that “anyone travels to Manhattan just for its
food, or that Manhattan is associated with steak houses” or
that “MANHATTAN and NEW YORK are synonymous.” Applicant’s
Br. at 4-5. Applicant also speculates that New York style
“could just as easily refer to New York State.”
Applicant’s Br. at 5. Finally, applicant contends that
Manhattan suggests “a certain sophistication or affluent
style … [and] is suggestive of a sophisticated or ‘high
class’ restaurant.” Applicant’s Br. at 5-6.
After considering the applicant’s and the Examining
Attorney’s arguments and the evidence, we affirm the
Examining Attorney’s refusal to register applicant’s mark
on the ground that it is primarily geographically
deceptively misdescriptive of applicant’s restaurant
services.
Our primary reviewing court has set out the standard
for determining whether a term is primarily geographically
deceptively misdescriptive:
Ser. No. 75/759,404
4
For a mark to be primarily geographically deceptively
misdescriptive, the mark must (1) have as its primary
significance a generally known geographic place, and
(2) identify products that the purchasers are likely
to believe mistakenly are connected with that
location.

In re Wada, 194 F.3d 1297, 52 USPQ2d 1539, 1540 (Fed.
Cir. 2000).
A mark is primarily geographically deceptively
misdescriptive if “the public would likely believe the mark
identifies the place from which the goods originate and
that the goods do not come from there.” In re Loew’s
Theaters, 769 F.2d 764, 226 USPQ 865, 868 (Fed. Cir. 1985).
First, we must determine whether Manhattan is a
geographical term. The Examining Attorney’s definition of
“Manhattan” makes it clear that it is a well-known
geographical term. According to that entry, Manhattan
contains the main commercial and financial section of New
York City, the United Nations, and numerous colleges and
universities. Its population in 1990 was nearly 1.5
million people. In addition, the Columbia Lippincott
Gazetteer of the World (1962), pp. 1138-39, notes that
“Manhattan” and “New York” are “virtually synonymous.”2 It
is clear that Manhattan is a geographic location that is

2 We take judicial notice of this definition.
Ser. No. 75/759,404
5
not remote or obscure.3 The addition of the generic words
“steak house” to the geographical term “Manhattan” does not
take away from or otherwise alter the primary geographical
significance of the mark. Wada, 52 USPQ2d at 1540-41 (The
addition of the words WAYS GALLERY to NEW YORK did not
change the mark’s geographical significance). The
additional words in this case simply emphasize the
association of steak house restaurants with New York and
Manhattan.
We also find that there is a services/place
relationship between Manhattan and restaurant services.
Based on the evidence, we find that it is reasonable that
consumers encountering applicant’s MANHATTAN STEAK HOUSE
mark will mistakenly believe that the services have their
origin in Manhattan or are otherwise connected with
Manhattan. Applicant relies heavily on the In re Municipal
Capital Markets Corp. case, 51 USPQ2d 1369 (TTAB 1999).
That case held that an “Examining Attorney must present
evidence that does something more than merely establish
that services as ubiquitous as restaurant services are
offered in the pertinent geographic location.” 51 USPQ2d

3 We also take judicial notice that New York City is “a vibrant
center for commerce and business and one of the 3 ‘world cities’
along with London and Tokyo that control world finance” and that
Manhattan is “the heart of the city.” The Columbia Gazetteer of
the World (1998), p. 2167.
Ser. No. 75/759,404
6
at 1371. In that case, the presence of some restaurants in
the town of Cooperstown, New York, was insufficient to
establish a services/place relationship with the word
COOPERSTOWN.
Here, the Examining Attorney has submitted evidence
that New York is so noted for steak houses that restaurants
across the country are referred to as “New York style steak
houses.”
Eric Kurtz’s head turns every time someone comes
through the door of his New York Style steak house on
Broad Street. Asbury Park Press, April 20, 2000, p.
F8.

[T]hey set out to recreate the quintessential New York
style steak establishment. Nation’s Restaurant News,
April 17, 2000, p. 26.

It’s a brash, New York–style steak house, but don’t
let that keep you away from the succulent prime beef,
lobster bisque and wonderful wine list offering more
than 500 selections. Waste Age, April 1, 2000, p.
126.

… and the Rock Center Café, a New York-style steak
house that replaces the American Festival Cafe.
Nation’s Restaurant News, January 17, 2000, p. 4.

When we finally found the sign for L.A. Prime, the
hotel’s new New York-style steakhouse, we waved over
one of our party who had strayed. Los Angeles Times,
July 13, 2000, p. F43.

We’re not quite sure why little old Annapolis needs
three New York style steak houses. The Entertainment
Guide, May 19, 2000, p. 2.

The evidence demonstrates the “something more” that
the Examining Attorney needs to establish a services/place
Ser. No. 75/759,404
7
relationship at least between New York and restaurant
services.4
Unlike Cooperstown, New York is so known for steak
houses that its name is associated with a type of steak
house. The only question remaining is whether Manhattan,
the financial and commercial center of New York City, would
also be associated with steak houses. There is one
reference that describes a restaurant as a “Modern,
Manhattan-style steak house.” The New York Times, December
18, 1988, Section 12LI, p. 37. The term “Manhattan” is
virtually synonymous with “New York.” Applicant’s specimen
emphasizes that restaurant’s connection with New York
(“Romance New York Style”). Thus, applicant’s MANHATTAN
STEAK HOUSE suggests a restaurant with a connection with
Manhattan in New York City and not simply a sophisticated
or affluent place.
Moreover, the Examining Attorney did not have to
establish that there is “such a thing as a ‘MANHATTAN
STYLE’ steak house” as applicant suggests. Reply Br. at 2.
Similarly, the Examining Attorney did not need to establish
that Manhattan is noted for, or suggestive of, a particular

4 We fail to see any significance to applicant’s argument that
these references to New York may be to the State of New York.
Manhattan is in the City of New York, which is, of course, in the
State of New York.
Ser. No. 75/759,404
8
style of steak houses. See In re The Cookie Kitchen, Inc.,
228 USPQ 873, 874 (TTAB 1986) (“It is not, as applicant
asserts, a question of whether Manhattan is famous or noted
for cookies”).
The term “Manhattan” is a geographical term that is
not remote and obscure. Not only do restaurant services
originate in Manhattan, but also steak houses are a well-
known type of restaurant that are associated with New York,
the city and state where Manhattan is located. Manhattan,
the heart of New York City, would have a services/place
connection with these restaurants. Applicant has not
submitted evidence that rebuts the Examining Attorney’s
prima facie case. Based on these facts, we conclude that
the public would mistakenly believe that applicant’s
restaurant services rendered under applicant’s mark
MANHATTAN STEAK HOUSE originate in Manhattan or are
otherwise connected with Manhattan. When the services do
not, in fact, originate in Manhattan, the mark is primarily
geographically deceptively misdescriptive.
Decision: The refusal to register the mark under
Section 2(e)(3) of the Trademark Act is affirmed.