Boyd Gaming Corp.

Trademark Trial and Appeal Board

Nov 30, 2000

No. 75559780 (T.T.A.B. Nov. 30, 2000)

Paper No. 9
RLS/JMP
THIS DISPOSITION IS CITABLE AS
PRECEDENT OF THE TTAB 11/30/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Boyd Gaming Corporation
________
Serial Nos. 75/541,256; 75/559,780; and 75/559,786
_______
Whitney Thier of Quirk & Tratos for Boyd Gaming Corporation
David C. Reihner, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney)
_______
Before Simms, Seeherman and Bottorff, Administrative
Trademark Judges.
Opinion by Simms, Administrative Trademark Judge:
Boyd Gaming Corporation (applicant), a Nevada
corporation, has appealed from the final refusals of the
Trademark Examining Attorney to register the mark shown
below:
for various wearing apparel in Application Serial Number
75/559,780, and for various beauty products and perfumes in
Ser. Nos. 75/541,256; 75/559,780; and 75/559,786
2
Application Serial Number 75/559,786.1 Applicant has also
appealed from the refusal to register the mark HAVANA
RESORT & CASINO for the same items of wearing apparel that
are set forth in Serial No. 75/559,780.2 The Examining
Attorney has refused registration under Section 2(e)(3) of
the Act, 15 U.S.C. §1052(e)(3), arguing that applicant’s
asserted marks are primarily geographically deceptively
misdescriptive of its goods.3 Applicant and the Examining

1 Both applications were filed September 25, 1998, and assert
applicant’s bona fide intention to use the mark in commerce. The
first listed application seeks to register the mark for the
following goods:
wearing apparel, namely, polo shirts, t-shirts,
tank tops, shirts, jackets, jogging suits, sweat
shirts, sweat pants, jeans, pants, robes, sleepwear,
rompers, scarves, socks, slippers, hats and caps.
In the second listed application, applicant seeks to register the
mark for the following goods:
colognes; perfumes; body lotion; skin care products,
namely, skin cleansing lotion, skin creams, skin
moisturizers, skin cleansing cream, facial cleansers,
facial creams, facial masks, facial scrubs, facial
moisturizer; facial lotions; bath and shower gels;
bath oils; bath soaps; aroma therapy products, namely,
aroma therapy oils; sun screens, suntan lotions; hair
shampoo; hair conditioner; body powder; lip gloss;
facial cosmetics, namely, foundation, concealer, face
powder, blush, eye shadow, eye liner, mascara, lip
stick, and lip pencils.
2 Application Serial No. 75/541,256, filed August 24, 1998, based
on applicant’s bona fide intention to use the mark in commerce.
3 This section of the Act bars registration of a mark which

(3) when used on or in connection with the goods
of the applicant is primarily geographically
deceptively misdescriptive of them…
Ser. Nos. 75/541,256; 75/559,780; and 75/559,786
3
Attorney have submitted briefs, but no oral argument was
requested.
We affirm.
The Examining Attorney argues that applicant’s marks
are barred from registration because the primary
significance of applicant’s marks as a whole is the
geographic place “Havana”; that there is a goods/place
association between the goods in applicant’s applications
and the capital city of Cuba; and that applicant’s goods do
not come from Havana. Both the Examining Attorney and
applicant’s attorney have agreed that Havana is a major
city in Cuba and that applicant’s goods do not come from
that city.
The Examining Attorney acknowledges that the entire
marks are more than the name of Cuba’s capital city.
However, the Examining Attorney argues that the overall
impressions of applicant’s marks do not detract from the
geographic significance of the word “Havana” contained in
the marks. According to the Examining Attorney, the marks
as a whole emphasize that applicant’s goods have their
origin in Havana.
Further, in view of the evidence of a goods/place
association which the Examining Attorney has placed in the
record of these applications, the Examining Attorney argues
Ser. Nos. 75/541,256; 75/559,780; and 75/559,786
4
that the public is likely to believe that applicant’s goods
come from Havana, Cuba. In this regard, the Examining
Attorney points out that Havana produces a variety of
goods, including clothing and cosmetic items similar to the
goods in these applications. Because of this, the
Examining Attorney argues that Havana will be associated
with applicant’s goods.
Applicant’s attorney indicates that applicant owns
numerous resort hotels and riverboat casinos throughout the
United States, including the Stardust hotel and casino in
Las Vegas, Nevada. Applicant seeks to build a resort hotel
casino under the marks sought to be registered and to sell
merchandise under these marks. It is applicant’s position
that it is not likely that consumers purchasing applicant’s
wearing apparel, cosmetics and other goods from its resort
located in the United States will believe that the “Havana”
portion of its marks is an indicator of the geographic
location of applicant’s goods. Rather, according to
applicant, purchasers will view applicant’s marks in their
entireties and believe that applicant’s goods emanate from
the resort hotel casino bearing that name. In this regard,
applicant contends that, because its resort hotel services
will also be offered under the asserted marks, the marks
sought to be registered are or will be indicators of
Ser. Nos. 75/541,256; 75/559,780; and 75/559,786
5
secondary source, that is, the resort hotel and casino
itself.
Applicant states that, currently, a number of resort
hotels use fantasy themes suggested by such names as RIO,
NEW YORK NEW YORK, LUXOR, PARIS and VENETIAN,4 and that
applicant’s resort casino is intended to evoke the aura or
fantasy of being in 1950’s pre-Castro Cuba. Accordingly,
it is applicant’s position that the marks, including the
name “Havana”, are arbitrary or suggestive, being
reminiscent of the Havana, Cuba, of a bygone era.
Further, because of the embargo on all Cuban products,
it is illegal under U.S. law to import and sell Cuban
goods. Applicant maintains, therefore, that no reasonable
consumer will believe that applicant’s goods come from
Havana, Cuba. In any event, applicant argues that people
do not associate wearing apparel and beauty products with
Cuba. Because the marks do not designate the geographical
origin of applicant’s goods, applicant contends that its

4 Applicant indicated in its response to the first Office action
that some of these marks had been registered, indicating the
registration numbers. Although applicant has not submitted
copies of any third-party registrations, the Examining Attorney
did not object to applicant’s reference to these registrations
and in fact made no mention of these marks at all. Accordingly,
we have considered them to be of record. However, in its brief,
applicant also noted, for the first time, other registrations of
geographic terms for other goods and services. We have not
considered these to be of record. See Trademark Rule 2.142(d).
Ser. Nos. 75/541,256; 75/559,780; and 75/559,786
6
marks are not primarily geographically deceptively
misdescriptive of the goods.
In rebuttal of applicant’s argument, the Examining
Attorney argues that it is reasonable to believe that a
segment of the U.S. public does not know that a trade
embargo exists on Cuban goods. Also, according to the
Examining Attorney, Americans who travel to countries that
conduct trade with Cuba, such as Canada and Spain, may buy
Cuban goods in those foreign countries. Further, the
Examining Attorney argues that, even if purchasers know of
the trade embargo on Cuban goods, those people may still
make a goods/place association because they may believe
that there is an affiliation between the U.S. distributor
or provider of the goods and a Havana, Cuba, producer of
those goods, such as a parent-subsidiary or licensor-
licensee relationship. The Examining Attorney also
contends that, if and when the trade embargo is eventually
lifted, then a goods/place association will exist so that
any registrations issued to applicant will be defective.
Accordingly, the Examining Attorney argues that the trade
embargo provides no justification for registration.
With respect to the suggestive significance which
applicant contends the marks create, the Examining Attorney
argues, appeal brief, 5, that there is no evidence that
Ser. Nos. 75/541,256; 75/559,780; and 75/559,786
7
purchasers will perceive any association with pre-Castro
Cuba when purchasing applicant’s goods, and that purchasers
will not understand applicant’s mark as indicating
sponsorship by applicant’s establishment rather than
indicating geographic origin.
…The goods identified by a geographical mark may
or may not always be sold in conjunction with
other displays or promotions or services, so that
considering the size and image of applicant’s
resort and casino where its goods will be sold,
when determining registrability, is
inappropriate…
Further, even if the patrons of applicant’s
proposed resort and casino believed that the
goods were actually produced at applicant’s Las
Vegas, Nevada, resort and casino location, there
is nothing to dissuade those people from
believing that there is an association between
the goods and Havana, Cuba…
Upon careful consideration of this record and the
arguments of the attorneys, we agree with the Examining
Attorney that applicant’s asserted marks are primarily
geographically deceptively misdescriptive.
In order to establish a prima facie case for refusal
because a mark is primarily geographically deceptively
misdescriptive under Section 2(e)(3) of the Act, the
Examining Attorney must show that the primary significance
of the mark is geographic; that purchasers would be likely
to think that the goods originate in the geographic place
identified in the mark, that is, purchasers would make a
Ser. Nos. 75/541,256; 75/559,780; and 75/559,786
8
goods/place association; and that the goods do not in fact
originate in the place identified in the mark. In re Wada,
194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999)(NEW YORK
WAYS GALLERY for various types of bags, backpacks, purses,
etc., held unregistrable under Section 2(e)(3)); In re
Societe Generale des Eaux Minerales de Vittel S.A., 824
F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); In re Loew’s
Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir.
1985); and In re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889
(CCPA 1982).
While applicant’s asserted marks contain more words
than the geographic location “Havana,” we agree with the
Examining Attorney that the primary significance of the
marks is geographic. See Wada, supra, and In re Bacardi &
Co. Ltd., 48 USPQ2d 1031, 1033 (TTAB 1997)(HAVANA SELECT,
HAVANA CLASICO, OLD HAVANA, HAVANA PRIMO and HAVANA CLIPPER
for rum held unregistrable under Section 2(e)(3)). We do
not believe that the additional wording in applicant’s
marks detracts from the geographic meaning. Further, it is
our belief that purchasers seeing applicant’s goods in
applicant’s resort hotel and casino as well as, possibly,
Ser. Nos. 75/541,256; 75/559,780; and 75/559,786
9
in retail stores in this country,5 will believe that those
goods either emanate from or are authorized, sponsored or
licensed by a resort casino bearing that name in Havana,
Cuba, even though it is apparently not the name of an
actual resort in Havana. In this regard, the evidence
submitted by the Examining Attorney sufficiently
establishes a goods/place association between wearing
apparel and cosmetics and the city of Havana, a major
metropolitan city. See for example, Nantucket, supra, Nies
J., concurring, 213 USPQ at 895-96 (by way of illustration,
CHICAGO for shirts would be protectable only upon the
establishment of secondary meaning). Also, there is
evidence that tourism in Cuba has increased since the mid-
1980s with the construction of new hotels and resorts.
This makes more likely an association of the mark with
hotels and resorts in Cuba. See In re Kimpton Hotel &
Restaurant Group Inc., 55 USPQ2d 1154 (TTAB 2000)(HOTEL
MONACO held primarily geographically deceptively
misdescriptive of hotel services).

5 Applicant’s description of goods contains no limitation as to
the channels of trade in which its goods will be sold.
Accordingly, we must consider that applicant’s goods will be sold
in all reasonable channels of trade, including retail stores
which may carry this merchandise. Canadian Imperial Bank of
Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1493, 1
USPQ2d 1813, 1815 (Fed. Cir. 1987).
Ser. Nos. 75/541,256; 75/559,780; and 75/559,786
10
With respect to applicant’s argument concerning the
alleged significance of applicant’s marks suggesting an
association with 1950’s pre-Castro Cuba, we believe what
the Board stated in the Bacardi case, at 1034, is
applicable here:
[A]pplicant has submitted absolutely no
evidence to establish in this record that
the relevant purchasers would make such an
association. Further, even if 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.
See also Wada, 52 USPQ2d at 1540-41.
To the extent that applicant is arguing that potential
purchasers will associate applicant’s goods with its resort
hotel and casino, which apparently does not yet exist,
presumably on the basis of acquired distinctiveness,
suffice it to say that registrability pursuant to Section
2(f) is not available to marks which are primarily
geographically deceptively misdescriptive unless they
became distinctive of those goods in commerce before the
date of enactment of the North American Free Trade
Agreement Implementation Act (December 8, 1993). See Fred
Hayman Beverly Hills Inc. v. Jacques Bernier Inc., 38
USPQ2d 1691, 1692 (TTAB 1996).
Ser. Nos. 75/541,256; 75/559,780; and 75/559,786
11
With respect to the third-party registrations of a
number of geographic names, each application for
registration of a mark for particular goods or services
must be separately evaluated. See In re BankAmerica
Corporation, 231 USPQ 873, 876 (TTAB 1986) and cases cited
therein. We do not know what records were before the
Examining Attorneys in those cases. In the BankAmerica
case, we noted that Section 20 of the Trademark Act gives
the Board authority to decide appeals from adverse final
decisions of Examining Attorneys and that this duty may not
and should not be delegated by adoption of conclusions
reached by Examining Attorneys in different cases on
different records. Nor should the fact that the Examining
Attorney may have allowed applicant’s service mark
applications for casino resort services have persuasive
effect here.
We conclude that the Examining Attorney has made out a
prima facie case that applicant’s marks have primary
geographic significance and that a goods/place association
exists between applicant’s goods and the city of Havana,
and applicant has presented no evidence to rebut this
showing.
Ser. Nos. 75/541,256; 75/559,780; and 75/559,786
12
Decision: The refusal of registration in each
application is affirmed.
R. L. Simms
E. J. Seeherman
C. M. Bottorff
Administrative Trademark
Judges, Trademark Trial
and Appeal Board