Broome Mercer Corp.

Trademark Trial and Appeal Board

Oct 24, 2006

No. 76625510 (T.T.A.B. Oct. 24, 2006)

Mailed:
October 24, 2006
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re BROOME MERCER CORP.
________

Serial No. 76625510
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Myron Amer of Myron Amer, P.C. for BROOME MERCER CORP.

Lourdes D. Ayala, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Walters, Kuhlke and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

On June 20, 2004, BROOME MERCER CORP. (applicant)
filed an intent-to-use application to register the mark
SOHO RUNWAY in standard-character form on the Principal
Register for goods now identified as, “ladies clothing,
namely, dresses, blouses, slacks and fur coats” in
International Class 25.
The Examining Attorney refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), in
view of the mark in Reg. No. 1559982 which issued on
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76625510
2
October 10, 1989. The mark in the cited registration is
RUNWAY and the goods are “scarfs” in International Class
25. The registration claims both first use anywhere and
first use of the mark in commerce on February 6, 1989. The
registrant has filed the necessary 5-year affidavits and
the registration is active.
The Examining Attorney also required applicant to
disclaim “SOHO” under Section 6 of the Trademark Act, 15
U.S.C. § 1056, on the ground that it is primarily
geographically descriptive of the goods under Section
2(e)(2) of the Trademark Act, 15 U.S.C. § 1052(e)(2).
Applicant responded by arguing against the Section
2(d) refusal and the disclaimer requirement; the examining
attorney made both the refusal and the disclaimer
requirement final; and applicant filed this appeal. Both
applicant and the Examining Attorney have filed briefs. We
affirm both the refusal and the disclaimer requirement.
Before we address the merits of the appeal we will
address various arguments applicant has made with regard to
a potential refusal, one which was never issued. In the
initial Office action the Examining Attorney noted a prior-
pending, potentially conflicting application for the mark
PROJECT RUNWAY (Serial No. 78503733). The Examining
Attorney later withdrew consideration of that application
Ser No. 76625510
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as a basis for refusal. Applicant devotes much of its main
brief and reply brief to the PROJECT RUNWAY application.
Applicant appears to argue that the Examining
Attorney’s withdrawal of the PROJECT RUNWAY application as
a potential bar to registration somehow invalidates the
refusal with regard to the RUNWAY registration. We reject
this argument. The Examining Attorney never issued a
refusal with regard to PROJECT RUNWAY. Accordingly,
whether or not such a refusal would have been appropriate
is not before us. Also, we acknowledge that in its reply
brief applicant has corrected its own mistaken references
to the PROJECT RUNWAY mark as PERFECT RUNWAY in its main
brief. While applicant appears to attach some significance
to the Examining Attorney’s treatment of applicant’s
incorrect reference, we find none. Again, the Examining
Attorney’s determinations with regard to the PROJECT RUNWAY
application are not relevant to the issues in this appeal.
Furthermore, the action taken with regard to the
PROJECT RUNWAY application itself is not relevant to the
refusals in this case. Not only is the full record of that
application not of record in this application, but we must
decide each case according to its particular facts; we are
not bound by actions taken on other applications. In re
Ser No. 76625510
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Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001).
Turning to the refusals at issue here, Section 2(d) of
the Trademark Act precludes registration of an applicant’s
mark “which so resembles a mark registered in the Patent
and Trademark Office . . . as to be likely, when used on
or in connection with the goods of the applicant, to cause
confusion . . .” Id. The opinion in In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA
1977) sets forth the factors we may consider in determining
likelihood of confusion. Here, as is often the case, the
crucial factors are the similarity of the marks and the
similarity of the goods of the applicant and registrant.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976)(“The fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.”). Below we will discuss all
factors as to which applicant or the Examining Attorney
argued or presented evidence.
In comparing the marks we must consider the
appearance, sound, connotation and commercial impression of
both marks. Palm Bay Imports Inc. v. Veuve Clicquot
Ser No. 76625510
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Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005).
Other than arguments related to the PROJECT RUNWAY
application, applicant has not presented any arguments
specifically with regard to its mark, SOHO RUNWAY, and the
cited mark, RUNWAY. The Examining Attorney argues, “In
this case the mere addition of a geographic term to the
registered mark does not obviate the similarity between the
marks nor does it overcome a likelihood of confusion under
Section 2(d).” (Citation omitted.)
We agree with the Examining Attorney. “RUNWAY” is the
only element in the registered mark, and it is the more
distinctive and dominant element in applicant’s mark. As
discussed further below, the Examining Attorney has
provided evidence to establish that “SOHO” is a
geographical term and that it refers to an area noted for,
among other things, “galleries” and “artists’ lofts.” In
fact, the evidence also establishes that applicant is
located in the Soho section of New York City. Therefore,
we conclude that the inclusion of “SOHO” in applicant’s
mark is not sufficient to distinguish the marks because
“SOHO” is geographically descriptive, and consequently,
subordinate to RUNWAY in creating both the connotation and
commercial impression in applicant’s mark.
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Even if we concluded that “SOHO” was not
geographically descriptive, we would still conclude that it
is insufficient to distinguish the marks. The inclusion of
SOHO in applicant’s mark creates a superficial difference
between the marks in appearance and sound. However, the
inclusion of SOHO in applicant’s mark in no way alters the
essential connotation or commercial impression that RUNWAY
projects in applicant’s mark relative to RUNWAY in the
registered mark. In both instances, “RUNWAY” connotes high
fashion in suggesting perhaps a runway model or a fashion
show. SOHO merely serves to reinforce this suggestion
through its identification with the Soho section of New
York City and perhaps the art world. Also, as the
Examining Attorney suggests, applicant’s SOHO RUNWAY mark
is likely to be perceived as identifying a related line of
clothing from the same source as RUNWAY.
Accordingly, we conclude that the similarity in
connotation and commercial impression between the marks
overrides any differences in appearance and sound.
Therefore, we also conclude that the marks are similar
overall.
With regard to the goods, again applicant offers no
arguments. The Examining Attorney argues that the goods of
applicant and the registrant are related. To support this
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position the Examining Attorney has provided numerous
third-party, use-based registrations showing marks
registered for the types of goods identified in both the
application and the cited registration.
The records include the following, for example:
Reg. No. 2567635 for the mark VINTAGE VULTURE for,
among other goods, “dresses” and “scarfs”:

Reg. No. 2732072 for the mark IZZAT for, among other
goods, “slacks,” “blouses” and “scarfs”;

Reg. No. 2882956 for the mark SIESTA KEY for, among
other goods, “dresses,” “blouses,” “pants” and
“scarfs”;

Reg. No. 2836370 for the mark YUANSHOU for, among
other goods, “pants,” “fur coats,” and “scarfs”;

Reg. No. 2881459 for the mark BOOTYHOG GEAR for, among
other goods, “dresses” and “scarfs”;

Reg. No. 2879313 for the mark SQEL and Design for,
among other goods, “trousers,” “dresses,” “shirts” and
“scarfs”;

Reg. No. 2909328 for the mark DOATE for, among other
goods, “shirts,” “pants” and “scarfs”;

Reg. No. 2856048 for the mark YELLOW FEVER for, among
other goods, “pants,” “dresses” and “scarfs”;

Reg. No. 2884401 for a Design Mark for, among other
goods, “pants,” “dresses,” “blouses” and “scarfs”; and

Reg. No. 2925414 for the mark RALPH’S WORLD for, among
other goods, “shirts,” “pants” and “scarfs.”

While these registrations are not evidence that these
marks are in use, they have some probative value and do
indicate that the goods of applicant and registrant are of
Ser No. 76625510
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a type which may emanate from the same source. In re TSI
Brands Inc., 67 USPQ2d 1657, 1659 (TTAB 2002); In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993).
Furthermore, as the Examining Attorney notes, the
Board has often held various types of clothing like the
types at issue here related. See, e.g., Jockey Intl., Inc.
v. Mallory & Church Corp., 25 USPQ2d 1233, 1236 (TTAB
1992); In re Pix of America, Inc., 225 USPQ 691, 692 (TTAB
1985) and cases cited therein. In fact, the registrant’s
goods, “scarfs,” may complement applicant’s goods, for
example, ladies dresses or blouses.
Accordingly, we conclude that the goods of applicant
and registrant are closely related.
Finally, we conclude that there is a likelihood of
confusion between applicant’s mark and the mark in the
cited registration because the marks are similar and the
goods of applicant and registrant are closely related.
With regard to the requirement to disclaim “SOHO”
applicant argues, “On the record there is no support for
the disclaimer requested by the examining attorney, except
to improperly buttress her argument that RUNWAY is more
dominant over SOHO.” In its reply brief applicant adds,
“Applicant’s trademark identified goods are sold
nationally, i.e. in commerce regulated by Congress. What
Ser No. 76625510
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percentage of customers in applicant’s national market know
that Soho is a district of New York City, and what prompted
the trademark examining attorney to even raise this as an
issue? These are fair questions.”
The Examining Attorney disputes applicant’s statement
that there is no support for the disclaimer requirement and
correctly points out that the record includes a definition
of “Soho” from the American Heritage Dictionary of the
English Language (3rd ed. 1992) stating, “district of New
York City on southwest Manhattan Island noted for its
galleries, restaurants and artists’ lofts. The area is
south of Houston Street, hence the name.” The Examining
Attorney has also provided a map which shows that
applicant’s address, which it provided in the application,
is in the district referenced in the dictionary definition.
The Examining Attorney also correctly points out that
applicant has not disputed the accuracy of any of the
evidence.
The only issue in this case with regard to the
disclaimer is whether or not “Soho” is primarily
geographically descriptive of applicant’s goods. To
determine whether “Soho” is primarily geographically
descriptive of applicant’s goods we must determine: (1)
whether the primary significance of the mark is as the name
Ser No. 76625510
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of a place which is generally known; and (2) whether the
relevant public would associate the goods of the applicant
with the place named, that is, whether the public would
believe that the goods come from the place named. In re
Societe Generale des Eaux Minerales de Vittel S.A., 824
F.2d 957, 3 USPQ2d 1450, 1452 (Fed. Cir. 1987); In re JT
Tobacconists, 59 USPQ2d 1080, 1081 (TTAB 2001); In re
California Pizza Kitchen Inc., 10 USPQ2d 1704, 1705 (TTAB
1988). Generally, in cases where the goods, in fact, come
from the place named, a goods-place association is
presumed. See, e.g., In re California Pizza Kitchen Inc.,
10 USPQ2d at 1705. In a concurring opinion in In re
Nantucket, Inc., 677 F.2d 95, 213 USPQ 889, 895 (CCPA
1982), Judge Nies discussed the common law origins of the
Trademark Act treatment of geographic terms, stating:
Basic to consideration of the registrability and
protectability of geographic terms as a trademark is
the routine commercial practice of merchants, whether
they are growers, manufacturers, distributors, or
local retailers in placing the name of their location
on their goods or using the name in their trade name.
Because the public would be aware of common trade
practice, the common law originally deemed all use of
geographic names wholly informational and
unprotectible. It was believed such names could not
function, and in any event, should not be recognized
as the identification of a single source. Thus we
must start with the concept that a geographic name of
a place of business is a descriptive term when used on
the goods of that business. There is a public
goods/place association, in effect, presumed.

Ser No. 76625510
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As noted, applicant has not disputed the evidence that
it is located in Soho. Therefore, in this case, the only
issue is whether or not “Soho” is a known geographical
location. This is also the only argument applicant appears
to present, however briefly. The definition the Examining
Attorney provided indicates that “Soho” is “noted” for its
“galleries” and “artists’ lofts,” among other things.
Based on that evidence, we conclude that the Examining
Attorney has established a prima facie case that Soho is a
recognized geographical location and not a place which is
so remote or obscure that it would not be recognized by
either the general public or potential purchasers of
applicant’s goods. Cf. In re the Cookie Kitchen, Inc., 228
USPQ 873, 674 (TTAB 1986)(MANHATTAN found geographically
deceptively misdescriptive for cookies which did not come
from Manhattan). Applicant has offered no evidence to
rebut this showing. Accordingly, we conclude that “SOHO”
is primarily geographically descriptive of applicant’s
goods and that the disclaimer requirement was proper.
Decision: The refusal to register the mark under
Section 2(d) of the Trademark Act and under Section 6 of
the Trademark Act are both affirmed.