Carolina Apparel

Trademark Trial and Appeal Board

Jun 5, 1998

No. 74658141 (T.T.A.B. Jun. 5, 1998)

Hearing: Paper No. 10
August 28, 1997 SIMMS/MD
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JUNE 5, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Carolina Apparel
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Serial No. 74/658,141
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Larry L. Coats of Rhodes, Coats & Bennett, L.L.P. for
Carolina Apparel.
Michelle Mooney-Ritchey, Trademark Examining Attorney, Law
Office 103 (Michael Szoke, Managing Attorney)
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Before Simms, Cissel and Hairston, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Carolina Apparel (applicant), a North Carolina
partnership, has appealed from the final refusal of the
Trademark Examining Attorney to register the mark CAROLINA
APPAREL (“APPAREL” disclaimed) for retail clothing store
services.1 The Examining Attorney has refused registration
under Section 2(e)(2) of the Act, 15 USC §1052(e)(2), on the

1 Application Serial No. 74/658,141, filed April 10, 1995, based
upon applicant’s bona fide intention to use the mark in commerce
under Section 1(b) of the Act, 15 USC †1051(b).
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basis that applicant’s mark is primarily geographically
descriptive of applicant’s services. Applicant and the
Examining Attorney have submitted briefs and an oral hearing
was held.
We affirm.
It is applicant’s position that its asserted mark is
not primarily geographically descriptive of its services.
With respect to the geographic significance of the term
“Carolina,” applicant notes that the dictionary definition
of record indicates that this was the name of an American
colony that no longer exists and does “not reference any
particular place that has meaning today.” Brief, 2. In
addition, applicant lists several third-party registrations
which include the term “CAROLINA” without a disclaimer.2
Applicant has also argued that “CAROLINA” is not known for

2 The Board does not take judicial notice of third-party
registrations, and the mere listing of them is insufficient to
make them of record. See In re Duofold, 182 USPQ 638, 640 (TTAB
1974). If either applicant or the Examining Attorney wishes to
rely on such registrations, paper copies (or computer printouts
from Office records) of those registrations should have been made
of record prior to appeal. See Trademark Rule 2.142(d). Even if
these registrations had properly been made of record, however,
they would not have changed the result we reach herein.
The Examining Attorney, on the other hand, has made of record a
number of third-party registrations which include the term
CAROLINA, where that term has been disclaimed or where the
registration was allowed under Section 2(f) of the Act, 15 USC
†1052(f).
Ser No. 74/658,141
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apparel, but rather is used in an arbitrary sense.3 See
applicant’s Response, filed April 1, 1996, 2. Accordingly,
although applicant acknowledges that its services are
rendered in the state of North Carolina, id., and brief, 5,
the actual items of clothing may come from a variety of
locations, applicant contends. It is applicant’s position,
therefore, that the asserted mark is not primarily
geographically descriptive of its services.
Both applicant’s attorney and the Examining Attorney
agree that, in order to justify a refusal under Section
2(e)(2) of the Act, this Office must show that the mark
sought to be registered is the name of a place generally
known to the public and that the public would make a
services/place association, i.e., believe that the services
for which the mark is being registered originate in that
place. See In re California Pizza Kitchens, Inc., 10 USPQ2d
1704, 1705 (TTAB 1989) and cases cited therein. Moreover,
if a geographic term in a mark is neither remote nor obscure
and the geographic significance is the primary connotation
of the term, and where the goods or services actually
originate from the geographic place designated in the mark,
a public association of the goods or services with the place

3 At the oral hearing, however, applicant’s counsel stated that
he did not dispute that textile products are associated with
North Carolina.
Ser No. 74/658,141
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may ordinarily be presumed. See California Pizza Kitchens,
supra, and In re Handler Fenton Westerns, 214 USPQ 848 (TTAB
1982). Here, the evidence of record shows that “Carolina”,
in addition to being the name of an American colony, also is
used to indicate either the state of North Carolina or the
state of South Carolina. See Random House Unabridged
Dictionary (2d ed. 1983). It is clear that the primary
significance of the designation CAROLINA APPAREL, APPAREL
being generic and disclaimed by applicant, is geographic.
The addition of a generic term to a geographic term does not
avoid the refusal of primary geographic descriptiveness.
See In re BankAmerica Corp., 231 USPQ 873 (TTAB 1986) and In
re Cambridge Digital Systems, 1 USPQ2d 1659 (TTAB 1986).
Inasmuch as the services admittedly do or will come from the
place named in the mark, a public association of the
services with the place named in the mark is presumed. In
any event, the definitions of “North Carolina” and “South
Carolina” from Webster’s New Geographical Dictionary (1988),
submitted with the Examining Attorney’s brief, but of which
we may take judicial notice, clearly demonstrate that
clothing and textiles are among the chief products of both
of these states. Accordingly, there is clearly an
association of applicant’s retail clothing store services
with the place named in the mark.
Ser No. 74/658,141
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Decision: The refusal of registration is affirmed.
R. L. Simms
R. F. Cissel
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial and
Appeal Board
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