BJIP, Inc.

Trademark Trial and Appeal Board

Jul 18, 2001

No. 75529080 (T.T.A.B. Jul. 18, 2001)

7/18/01

Paper No. 15
HRW

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re BJIP, Inc.
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Serial No. 75/529,080
_______

Kathleen M. Olster of Christie, Parker & Hale, LLP for
BJIP, Inc.

Lauriel Dalier, Trademark Examining Attorney, Law Office
113 (Meryl Hershkowitz, Managing Attorney).
_______

Before Simms, Wendel and Bottorff, Administrative Trademark
Judges.

Opinion by Wendel, Administrative Trademark Judge:
BJIP, Inc. has filed an application to register the
mark HAVANA for “furniture, namely, dining and occasional
indoor and outdoor furniture.”1
Registration has been finally refused on the ground
that the mark is primarily geographically deceptively
misdescriptive under Section 2(e)(3). Applicant and the

1 Serial No. 75/529,080, filed July 30, 1998, claiming a first
use date and first use in commerce date of August 11, 1997.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/529,080
2
Examining Attorney have filed briefs, but an oral hearing
was not requested.
In order to establish a prima facie case that a mark
is primarily geographically deceptively misdescriptive
under Section 2(e)(3) the Examining Attorney must show that
the mark (1) has as its primary significance a generally
known geographic place, and (2) identifies products that
purchasers are likely to believe mistakenly are connected
with that location, i.e., would make a goods/place
association. See In re Wada, 194 F.3d 1297, 52 USPQ2d
1539, 1540 (Fed. Cir. 1999); Institut National des
Appellations D’Origine v. Vinters International Co., 958
F.2d 1574, 22 USPQ2d 1190 (Fed. Cir. 1992). Needless to
say, a preliminary requirement is that the goods with which
the mark is being used do not originate from the named
place.
Here the Examining Attorney maintains that the mark
HAVANA is primarily geographically deceptively
misdescriptive when used with applicant’s furniture, which
does not originate from Havana, Cuba. In support of her
argument that the primary significance of the term Havana
is as a generally known geographic location, the Examining
Attorney has made of record a dictionary definition of
Ser No. 75/529,080
3
Havana as the capital and largest city of Cuba.2 That
applicant’s goods do not originate in Havana is said to be
evident not only from applicant’s corporate location but
also its statements concerning the U. S. trade sanctions
against Cuba which would prohibit any such importation. To
show that there is a “reasonable basis for concluding that
there is a public association between applicant’s furniture
goods and the city of Havana,” the Examining Attorney
relies upon various excerpts from articles obtained from
the Nexis database relating to the manufacture and sale of
furniture in Havana. On the basis of this evidence, the
Examining Attorney argues that a prima facie case has been
made that applicant’s mark is primarily geographically
deceptively misdescriptive.
Applicant states that it does not dispute that the
Examining Attorney has established that Havana is the name
of a geographic location, that applicant’s goods do not
come from this location and that furniture is manufactured
in Havana. (Reply brief, p.2). Applicant argues, however,
that this is insufficient evidence to establish a prima
facie case that purchasers would be likely to believe that
applicant’s goods originate from Havana. Applicant

2 The American Heritage Dictionary of the English Language, 3rd
ed. 1992.
Ser No. 75/529,080
4
contends that the requisite goods/place association between
furniture and Havana in the mind of the public has not been
established.
In support of its contention, applicant points to the
Board’s decision in In re Municipal Capital Markets Corp.,
51 USPQ2d 1369 (TTAB 1999) as being definitive of the type
of evidence which the Examining Attorney must present to
satisfy the goods/place association requirement. In that
case the applicant was seeking to register the mark
COOPERSTOWN for restaurant services. The Examining
Attorney had compiled a large number of extracts from
newspapers and magazines showing that there were
restaurants in Cooperstown. The Board held that in order
to prove a goods/place association, “the 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.”
Id. At 1371. The Board held that the “mere fact that
restaurant services were offered in Cooperstown ... is
simply not sufficient by itself to establish the requisite
goods/place association.” Evidence such as that showing
that the location had a somewhat greater than normal number
of restaurants offering a particular cuisine was suggested
as a possible satisfaction of the requirement.
Ser No. 75/529,080
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Applicant argues that here also the Examining Attorney
is required to show something more than the mere fact that
goods as ubiquitous as furniture are offered or
manufactured in Havana. Applicant argues that furniture is
used in every household; everyone must furnish their homes
or offices; and thus every community must have a place for
purchasing furniture. Based on this reasoning, applicant
insists that furniture must also be considered as a
ubiquitous product and that, as a result, insufficient
evidence has been made of record to establish a goods/place
association.
We do not find the “something more” requirement of the
Municipal Capital case applicable here. Although furniture
is found in every home or office, it does not follow that
furniture is offered or manufactured in every town. While
it is hard to imagine even a small town without a
restaurant of some type, furniture stores are not so
commonly found. Although furniture may be used in every
home or office, this can not be equated with the furniture
being purchased in the same locality. Clearly, the public
would not be likely to view each and every city or town as
a place in which furniture is produced. No parallel can be
drawn between the sale and production of furniture and the
offering and provision of restaurant services. Thus, we
Ser No. 75/529,080
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will not hold the Examining Attorney to the stricter
standard of “something more” in establishing a goods/place
association when furniture products constitute the goods in
issue. We find the evidence of record adequate to establish
prima facie that applicant’s mark is primarily
geographically deceptively misdecriptive.3
Applicant further argues that even if a prima facie
case has been established, applicant has rebutted this
prima facie case by showing that the term “Havana” is not
being used to indicate a location, but rather to evoke a
“life-style” or suggest a “desirable aura” of applicant’s
furniture. As support for its position, applicant points
to excerpted Nexis articles which the Examining Attorney
has made of record, although for a different purpose. In
her response to applicant’s request for reconsideration the
Examining Attorney introduced these articles to buttress
her arguments that Havana is associated not only with
furniture but a style of furniture and that, as a

3 Applicant’s argument that there is a further requirement that
customers will not be deceived by applicant’s mark because they
will not rely upon the geographic significance of the mark in
deciding to buy the product is not well taken. The refusal here
is under Section 2(e)(3), not 2(a). The additional requirement
that the geographic misrepresentation must be material to the
decision of the purchaser to buy the goods bearing the mark comes
into play only in a refusal that the mark is geographically
deceptive under Section 2(a). See Institut National v. Vintners
International, supra; In re Juleigh Jeans Sportswear Inc., 24
USPQ2d 1694 (TTAB 1992).
Ser No. 75/529,080
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consequence, purchasers would be likely to believe that
applicant’s furniture was in fact from Havana. In a
leading article we note excerpts such as the following:
... “Cuba is also well known for its colorful
style and rich cultural heritage. So it’s no surprise
that the country has been a source of inspiration
for designers and furniture manufacturers.

“In fact, I think consumers will begin to see more
Cuba-inspired products, especially in home
furnishings.”

This trend we’ll call “Old Havana Style” is taking
over the country in everything from furniture to
fabric to artwork.

Much of the furniture resembles European colonial or
plantation-style with caning, carving and dark wood
accented with decorative wrought iron. ...

... This design trend, experts agree, most likely
started to emerge at the October 1998 International
Home Furnishings Market with the introduction of
Pennsylvania House’s “Old Havana” and the “Havana”
segment of Thomasville’s “Ernest Hemingway” collection
of furniture.

... Quintana, who is an assistant professor at Florida
Internation University’s School of Architecture in
Miami, said the furniture created in Cuba was very
beautiful, very useful and worth copying.

San Diego Union-Tribune (November 12, 2000)

Similar articles by the same author as published in three
other newspapers were also made of record. In one of these
we note the following additional discussion:
Nationally, “Havana” has become the new design
buzzword. Pennsylvania House and Thomasville stamped
the moniker on recent furniture lines. Scalamandre
and Mulberry Home have introduced fabrics. Even
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Pottery Barn featured a woven Havana trunk in its
Early Fall 2000 catalog.

The Oregonian (October 14, 2000).

We agree that this evidence demonstrates that Cuba- or
Havana-style furniture has become very popular in recent
years in the United States. The name “Havana” or “Old
Havana” has been adopted by other furniture houses in
connection with certain lines of furniture, although
whether it is being used as a brand name or a descriptive
term is unknown. Nonetheless, we are not convinced that
the evidence before us establishes other than that for
which the Examining Attorney made it of record, namely that
there is a distinctive type of furniture which originates
in Havana and to which purchasers would be attracted for
this very reason. Whether or not such a style has been
copied by furniture manufacturers in the United States does
not does contradict the primary significance of the term,
as a geographic indication of the source of the style. We
liken the situation here to that in In re Bacardi & Co.
Ltd., 48 USPQ2d 1031, 1034 (TTAB 1998) wherein the
applicant argued that the term HAVANA, when used with rum
and cocktails containing rum, evoked “an historical and
stylistic image” associated with a “pre-Castro free-
wheeling lifestyle.” The Board held that “even if
Ser No. 75/529,080
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applicant had established an association between HAVANA and
a particular lifestyle, such association would not
contradict the primary geographic significance of the term,
as the association may be made precisely because of the
primary significance of HAVANA as a city in Cuba.”
Here we find the same to hold true. The primary
significance of the term HAVANA is as a geographic
location. The fact that a certain style of furniture is
associated with this location does not detract from this
primary significance but rather adds to the likelihood that
purchasers would associate these goods with this location.
Applicant has clearly failed to demonstrate that a domestic
Havana-type of furniture has become so prevalent in the
United States that purchasers would reasonably be expected
to recognize that furniture of this nature was not actually
produced in Havana, but rather was simply copies or U. S.
renditions of a Havana-like style of furniture. See In re
Narada Productions Inc., 57 USPQ2d 1801 (TTAB 2001) (no
evidence that there is a recognized genre or style of music
known as “Cuba L.A.” such that designation would be seen
primarily as identifying such a style of music rather than
the geographic origin of applicant’s goods and services).
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The goods/place association remains strong between Havana
and furniture. Accordingly, applicant has failed to rebut
the prima facie case established by the Examining Attorney.
Decision: The refusal to register under Section
2(e)(3) is affirmed.

Ser No. 75/529,080
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