Boats Direct, LLC

Trademark Trial and Appeal Board

Aug 7, 2014

No. 85418867 (T.T.A.B. Aug. 7, 2014)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 7, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Boats Direct, LLC
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Serial No. 85418867
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Ejola Cook of The Ticktin Law Group,
for Boats Direct, LLC.
Jessica Ellinger Fathy, Trademark Examining Attorney, Law Office 110,
Chris A. F. Pedersen, Managing Attorney.
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Before Bergsman, Gorowitz and Hightower,
Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
Boats Direct, LLC (“Applicant”) seeks registration on the Principal Register of
the mark BOATS DIRECT USA (in standard characters) for
“Boat dealerships; Dealerships in the field of Boats” in
International Class 35.1
The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(e)(2) of the Trademark Act, 15 U.S.C. § 1052(e)(2), on the

1 Application Serial No. 85418867 was filed on September 9, 2011, based upon Applicant’s
claim of first use anywhere and use in commerce since at least as early as July 19, 2011.
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ground that the mark is primarily geographically descriptive of Applicant’s services.
Applicant appealed the final refusal. We reverse the refusal to register.
I. Evidentiary Issues.
Before proceeding to the merits of the refusal, we address an evidentiary matter.
Applicant submitted new evidence with its appeal brief, consisting of: definitions of
the term “direct” from the Free Merriam-Webster Dictionary (m-w.com), nine
registrations from the Trademark Electronic Search System (TESS), and webpages
regarding Applicant. Evidence submitted after an appeal is untimely and ordinarily
will not be considered. Trademark Rule 2.142(d), 37 CFR § 2.142(d). However, if the
Examining Attorney, in his or her brief, discusses the exhibits attached to the
Applicant’s brief without objecting to them, they will be deemed to have been
stipulated into the record and will be considered. See In re Development Dimensions
International, Inc., 219 USPQ 161 (TTAB 1983), and Trademark Trial and Appeal
Board Manual of Procedure (TBMP) § 1207.03 (2014). We take judicial notice of the
definitions of the term “direct.”2 Further, since the Examining Attorney did not
object to the submission of the third-party registrations and, in fact, discussed them
in her Brief, we consider the registrations to have been stipulated into the record
and they will be considered. Finally, we note that some of the webpages had been

2 The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac
v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or
have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).

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submitted during prosecution and were considered. We have not considered the
webpages that were not submitted prior to the appeal.
II. Discussion.
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, and (2) the public
would make an association between the goods or services and the place named in
the mark (a “goods or services/place association”), that is, believe that the goods or
services for which the mark is sought to be registered originate in that place. In re
Hollywood Lawyers Online, 110 USPQ2d 1852, 1853-54 (TTAB 2014). See also In re
Societe Generale des Eaux Minerals de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450
(Fed. Cir. 1987); In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001); University
Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385 (TTAB
1994); and In re California Pizza Kitchen, Inc., 10 USPQ2d 1704 (TTAB 1988). If
the goods or services do in fact emanate from the place named in the mark, the
goods or services/place association can be presumed. In re Carolina Apparel, 48
USPQ2d 1542 (TTAB 1998).
Applicant admits that “the term ‘USA’ is generally known to be the United
States of America.” Appeal Brief, p. 3, 4 TTABVUE at 4. Moreover, we find that
there is nothing in the mark that affects the primary geographical meaning of the
term USA. Thus, we find that the first factor of the test for determining whether a
term is primarily geographically descriptive is satisfied.
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Turning to the second factor of the geographic descriptiveness test, Applicant is
located in Key Largo, Florida. The services Applicant has applied to register do in
fact emanate from the place named in the mark, the United States of America.
Therefore, a services/place association is presumed.
However, Applicant argues that there is no “association or evidence to show that
the public would attribute boat sales in the United States to the applied for mark.”
Id. To support its argument, Applicant relies on nine third-party registrations that
include the term “USA.” Applicant’s reliance is misplaced. Four of the registrations
(LED MFG, USA & design, SCOTT GOLF USA, AGRO PROTECTION USA, INC.,
and AUTO USA INTERNET SALES SOLUTIONS & design) include disclaimers of
the term “USA”; one of the registrations (USA TODAY BEST SELLING BOOKS
WHAT AMERICA’S READING) is on the Supplemental Register; and two of the
registrations (USA FINANCIAL and USA PAWN & JEWELRY CO.) include a claim
of acquired distinctiveness under Section 2(f) of the Trademark Act. The only
exception is the registration for USA HAIR CLINICS, in which the term USA is in
stylized form with a strand of hair depicted inside of the letter “U.” Thus, these
registrations do not support Applicant’s argument that the public would not
associate the term “USA” with a geographic location.
Applicant has not successfully rebutted the services/place presumption.
Accordingly, we find that the term “USA” in the mark is geographically descriptive.
We next evaluate the mark in its entirety to determine whether the mark is
primarily geographically descriptive. To that end, we look at the non-geographical
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terms in the mark. “The presence of generic or highly descriptive terms in a mark
which also contains a primarily geographically descriptive term does not serve to
detract from the primary geographical significance of the mark as a whole.” JT
Tobacconists, 59 USPQ2d at 1082 (MINNESOTA CIGAR COMPANY primarily
geographically descriptive of cigars from Minnesota). Similarly, the presence of
words that are both highly suggestive and laudatory does not detract from the
primarily geographic significance of a mark. In re South Park Cigar Inc., 82
USPQ2d 1507, 1513 (TTAB 2007) (“The word GOLD in Applicant’s mark YBOR
GOLD [for cigars and tobacco] is highly suggestive and laudatory, simply connoting
the high quality of the goods,” which does not detract from the primarily geographic
significance of the mark.). In other words, if the term “BOATS DIRECT” is generic,
highly descriptive, or highly suggestive and laudatory, the entire mark will be
deemed primarily geographically descriptive.
It is uncontroverted that the word “BOATS” is generic for boats.3 Thus, the
question is whether the addition of the word “DIRECT” creates a highly descriptive,
generic or a highly suggestive and laudatory composite mark. “The [E]xamining
[A]ttorney maintains that [t]he wording [BOATS DIRECT] does not detract for [sic]
the primary geographic significance of the mark. The wording merely describes the
nature of Applicant’s services, namely, that applicant’s dealerships provide the
direct sale of boats.” Examining Attorney’s Brief, p. 9, 6 TTABVUE at 8. There is,

3 “Boat” is defined as: a. a relatively small, usually open craft of a size that might be carried
aboard a ship. b. An inland vessel of any size. c. A ship or submarine. Definition from
Houghton Mifflin on Yahoo Education website (education.yahoo.com). Office Action dated
January 6, 2012, unnumbered p. 15.
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however, no definition or other evidence explaining the meaning of the “direct” sale
of boats.
Both the Examining Attorney and the Applicant submitted definitions of the
word “direct,” including the following definitions from Yahoo.com, which essentially
encompass all of the other definitions submitted:
Verb:
1. To manage or conduct the affairs of, regulate
2. To have or take charge of, control. See Synonyms
at conduct.
3. To give authoritative instructions to: directed the
student to answer.
4. To cause to move toward a goal: aim. See Synonyms
at aim.
5. To show or indicate the way for: directed us to the
airport.
6. To cause to move in or follow a straight course:
directed their fire at the target.
7. To indicate the intended recipient of (a letter, for
example).
8. To address or adapt (remarks, for example) to a
specific person, audience, or purpose.
9. a. To give guidance and instruction to (actors or
musicians, for example) in the rehearsal and
performance of a work.
b. To supervise the performance of.
Verb:
1. To give commands or directions.
2. To conduct a performance or rehearsal.

Adjective:
1. Proceeding without interruption in a straight
course or line, not deviating or swerving: a direct
route.
2. Straightforward and candid; frank: a direct
response.
3. Having no intervening persons, conditions, or
agencies; immediate: direct contact; direct sunlight.
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4. Effected by action of the voters, rather than
through elected representative or delegates: direct
elections.
5. Being of unbroken descent, lineal: a direct
descendant of the monarch.
6. Consisting of the exact words of the writer or
speaker: a direct quotation; direct speech.
7. Lacking compromising or mitigating elements;
direct opposites.
8. Mathematics Varying in the same as another
quantity, especially increasing if another quantity
increases or decreasing if it decreases.
9. Astronomy Designating west-to-east motion of a
planet in the same direction as the sun’s movement
against the stars.
10. Sports Being a free kick in soccer by which a goal
can be scored without the ball being touched by a
second player.

Despite Applicant’s admission that some of the boats it sells are “factory direct,” the
Examining Attorney has not established that the term “BOATS DIRECT” describes
a feature of Applicant’s dealership in factory-direct boats, nor has the Examining
Attorney established that any of these definitions apply to the word “direct” as used
in conjunction with the word “boats.” To be clear, there is no evidence supporting
the Examining Attorney’s contention that the term “Boats Direct” is merely
descriptive or even that it is highly suggestive and laudatory. Accordingly, we find
that the phrase “BOATS DIRECT” is not highly descriptive, generic or highly
suggestive and laudatory.
Since the mark BOATS DIRECT USA does not consist of a geographically
descriptive term combined with a highly descriptive, generic, or highly suggestive
and laudatory term, the mark is not primarily geographically descriptive. As such,
the mark is inherently distinctive and proof of acquired distinctiveness is not
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required. Accordingly, it is not necessary for us to decide the issue of acquired
distinctiveness.
As discussed above, the word “BOATS” is generic and the word “USA” is
geographically descriptive. Registration of the mark BOATS DIRECT USA cannot
issue without disclaimers of these words. Pursuant to Trademark Rule 37 CFR
§ 2.142(g), the Board is permitted to reopen the application for the purpose of entry
of a disclaimer under Section 6 of the Trademark Act. See In re Johanna Farms,
Inc., 223 USPQ 459, 462 (TTAB 1984).
Decision: The refusal to register Applicant’s mark BOATS DIRECT USA is
reversed. The application is reopened and remanded to the Examining Attorney for
entry of disclaimers of the words “BOATS” and “USA.” Upon entry of the
disclaimers, the application may be published for opposition.