British-American Tobacco (Holdings) Ltd.

Trademark Trial and Appeal Board

Oct 15, 2001

No. 75475767 (T.T.A.B. Oct. 15, 2001)

10/15/01

Paper No. 16
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re British-American Tobacco (Holdings) Limited
________

Serial No. 75/475,767
_______

Kathleen E. McCarthy, Maren Coburn and Charles P. Guarino
of Morgan & Finnegan, LLP for British-American Tobacco
(Holdings) Limited.

Tina L. Snapp, Trademark Examining Attorney, Law Office 103
(Thomas G. Howell, Managing Attorney).
_______

Before Simms, Hairston and Bottorff, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

British-American Tobacco (Holdings) Limited has filed
an application to register the mark shown below,

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/475,767
2
for “direct mail advertising and advertising agency
services, namely, promoting the goods and services of
others through the distribution of printed materials and by
rendering sales promotion advice.”1
The Trademark Examining Attorney has finally refused
registration on the ground that applicant has failed to
comply with the requirement for a disclaimer, under Section
6(a) of the Trademark Act, of the phrase “BRITISH
AMERICAN.” Applicant has volunteered to disclaim
separately the words “BRITISH” and “AMERICAN,” arguing that
the record fails to demonstrate that “‘British American’ is
a unitary geographically descriptive phrase in the context
of the mark and services at issue here.” (Reply brief, p.
1).
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but no oral hearing
was requested.
It is the Examining Attorney’s position that although
“BRITISH AMERICAN” does not name an actual geographic
place, it is nonetheless geographically descriptive matter

1 Serial No. 75/475,767, filed on April 28, 1988, based upon
applicant’s allegation of a bona fide intention to use the mark
in commerce. The word “TOBACCO” has been disclaimed apart from
the mark as shown.
Ser No. 75/475,767
3
and therefore it must be disclaimed as a unitary phrase.
The Examining Attorney maintains that the requirement for a
disclaimer of the unitary phrase “BRITISH AMERICAN” is
consistent with Office practice and relies on third-party
registrations for composite marks wherein such terms as
“Chinese American,” “Iranian American,” “African American,”
“West Indian American,” “Lebanese American,” and “German
American” have been disclaimed.
Applicant, in urging reversal of the refusal to
register, makes a number of arguments. First, applicant
argues that the evidence made of record by the Examining
Attorney does not support her contention that the term
“British American” is primarily geographically descriptive.
However, in an earlier case having analogous facts, the
Board dealt with a similar issue:
[T]he basis for applicant’s position is that
when combined in the phrase LONDON & EDINBURG,
the individual geographic terms become
nongeographic because London & Edinburgh
is not the name of a particular geographic
place. We disagree. When the mark LONDON &
EDINBURGH INSURANCE is viewed as a whole,
the geographic significance of the words
is not lost. Consumers will still regard
the mark as referring to the cities of
London and Edinburgh, rather than to some
mythical place called “London & Edinburgh.”
Nor can London & Edinburgh be considered

Ser No. 75/475,767
4
such an odd or incongruous combination of
geographic place names that consumers will
view it as an arbitrary combination
without a geographic significance as a
whole … .”

Further, applicant argues that purchasers and
prospective purchasers who see its BRITISH AMERICAN TOBACCO
and design mark in connection with the identified services
will not assume that “British America” is a geographical
place. However, our decision does not turn on the
existence of a mythical place called “British America.”
Rather, we conclude that purchasers and prospective
purchasers will regard the combined words BRITISH AMERICAN
in applicant’s mark as having primarily geographic
significance. The NEXIS evidence supports the conclusion
that this is a combination that purchasers are quite
accustomed to seeing since it is used in the media.
Moreover, this geographical significance is not lost with
the addition of the word “TOBACCO” to “BRITISH AMERICAN,”
or because the word “tobacco” is arbitrary for the
identified services. That this entire composite also
happens to be part of applicant’s logo, contains its trade
name and constitutes a critical component of its corporate
identity is largely irrelevant to the question of whether
BRITISH AMERICAN is primarily geographical.
Ser No. 75/475,767
5
With respect to the third-party registrations made or
record by the Examining Attorney for marks containing
“_________ AMERICAN, we note that the vast majority of
these registrations cover non-profit enterprises and
service organizations. We agree with applicant they are
not totally analogous and hence are of limited value in
reaching our decision herein.
Additionally, we agree with applicant that its
disclaimer of the term “BRITISH AMERICAN” in a prior
registration for tobacco is not binding on applicant in the
instant application for services. However, irrespective of
the goods/services involved, it does support the Examining
Attorney’s contention that in the past, the Office has
considered the designation “BRITISH AMERICAN,” like other
“_______ AMERICAN” terms, to be primarily geographical – a
determination totally apart from whether the current record
supports a finding of geographical descriptiveness for
particular services.
Finally, we turn to the question of how exactly the
disclaimer must read in this case. In a similar case, the
Board held that:
Petitioner’s request for entering two separate
disclaimers of “glass” and “technology” in the
uniform wording is inappropriate. To allow
two separate disclaimers of the individual words
in the standard printing format would effectively
Ser No. 75/475,767
6
permit piecemeal disclaimers of a unitary,
descriptive term. Disclaimers of individual
components of complete descriptive phrases are
improper. In re Surelock Mfg. Co., 125 USPQ 23
(TTAB 1960). Unitary expressions should be
disclaimed as a composite. American Speech-
Language-Hearing Assn. v. National Hearing Aid
Society, 224 USPQ 798 (TTAB 1984). “Glass
Technology” is a unitary phrase which is
descriptive of the automobile windshield
repair kits. Therefore, the wording must be
disclaimed in the composite. Separate
disclaimer of the individual words, “glass”
and “technology,” in the standard printing
format is improper.

In re Wanstrath, 7 USPQ2d 1412 (Comm’r 1987).

Consistent with these reported decisions, long-
standing Office practice has required that unitary phrases
be disclaimed in their entirety. Accordingly, the
Trademark Examining Attorney was correct is to require a
disclaimer of the unitary phrase BRITISH AMERICAN.
Decision: The requirement, under Section 6 of the
Trademark Act, for a disclaimer of BRITISH AMERICAN is
affirmed. Nonetheless, this decision will be set aside and
applicant’s mark published for opposition if applicant, no
later than thirty days from the mailing date hereof,
submits an appropriate disclaimer of BRITISH AMERICAN.