CCC Acquisition Corp.

Trademark Trial and Appeal Board

Mar 7, 2000

No. 75285708 (T.T.A.B. Mar. 7, 2000)

Paper No. 12
ejs
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MARCH 7, 00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re CCC Acquisition Corp.
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Serial No. 75/285,708
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Karen Artz Ash and Monique L. Ribando of Amster, Rothstein
& Ebenstein for CCC Acquisition Corp.
Paul P. Lamb, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney)
_______
Before Seeherman, Hanak and Bucher, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
CCC Acquisition Corp. has appealed from the refusal of
the Trademark Examining Attorney to register LONDON BEAT as
a trademark for “clothing, namely swimsuits, skirts,
jackets, vests, dresses, T-shirts, tank tops, shorts,
pants, shirts, swimsuit cover-ups, body suits, headwear and
Ser. No. 75/285,708
2
footwear.”1 Registration has been refused pursuant to
Sections 2(e)(1) and 2(a) of the Trademark Act, 15 U.S.C.
1052(e)(1) and 1052(a), on the ground that applicant’s mark
is deceptively geographically misdescriptive and
geographically deceptive.
Applicant and the Examining Attorney have filed appeal
briefs; an oral hearing was not requested.
Preliminarily, we note that with its response to the
first Office action applicant listed a number of third-
party registrations for marks containing the term LONDON.
The Examining Attorney pointed out that third-party
registrations could not be made of record merely by listing
them, citing In re Duofold Inc., 184 USPQ 638 (TTAB 1974).
Applicant subsequently filed a request for reconsideration,
but did not submit copies of the registrations. In its
brief applicant again has listed the registrations, and in
his brief the Examining Attorney has objected to the
registrations, pointing out again that they were never
properly made of record.
The Examining Attorney’s objection is well taken, and
the third-party registrations referred to by applicant have
not been considered.

1 Application Serial No. 75/285,708, filed May 2, 1997,
asserting a bona fide intention to use the mark in commerce.
Ser. No. 75/285,708
3
Applicant has also submitted, with its brief, copies
of certain articles and excerpts from a Dun & Bradstreet
report. Trademark Rule 2.142(d) provides that the record
in the application should be complete prior to the fling of
an appeal, and that, after an appeal is filed, if the
applicant desires to introduce additional evidence, it may
request the Board to remand the application for further
examination. Obviously applicant did not follow this
procedure. Accordingly, and because the Examining Attorney
did not refer to this material in his brief, thereby in
essence stipulating to its entry into the record, it has
not been considered.
A term is deceptively geographically misdescriptive
under Section 2(e)(1) of the Statute if the mark sought to
be registered 1) has as its primary significance a
generally known geographic place, and 2) identifies
products that purchasers are likely to believe mistakenly
are connected with that location, i.e., that the public
would make a goods/place association.. In re Wada, 194
F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999). See also,
Institut National Des Appellations D’Origine v. Vintners
Int’l Co., 958 F.2d 1574, 22 USPQ2d 1190 (Fed. Cir. 1992);
In re Societe Generale des Eaux Minerales de Vittel S.A.,
824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987). In order to
Ser. No. 75/285,708
4
establish that a mark is geographically deceptive the
Office must, in addition to the forgoing, show that the
geographic misrepresentation is material to the decision to
purchase the goods. Institut National Des Appellations
D’Origine v. Vintners Int’l Co., supra. See also, In re
Budge Manufacturing Co., Inc., 857 F.2d 773, 8 USPQ2d 1259
(Fed. Cir. 1988).
In support of his position that the mark LONDON BEAT
is geographically deceptively misdescriptive and
geographically deceptive for the identified clothing items,
the Examining Attorney has submitted excerpts from a number
of articles taken from the NEXIS data base, including the
following:
To the fashion industry, the designer
shows in New York, London, Milan and
Paris are as big as it gets.
“The Dallas Morning News,” March 17,
1999
Paris. Milan. London. New York. The
four cities set the tone for fashion
the world over.
“The Union Leader,” (Manchester, NH),
March 17, 1999
Disco diva and occasional movie star
Grace Jones, who never met an outfit
too outre, capped off her lithe frame
with something unusual from British mad
hatter Philip Treacy at his show during
London Fashion Week.
“People,” March 8, 1999
Ser. No. 75/285,708
5
…they had intended to prove that
Americans can set, not just follow,
trends established in London, Milan,
Italy, and Paris. That’s why New
York’s fashion community en masse broke
tradition this season and staged shows
ahead of Europe.
“Los Angeles Times,” February 23, 1999
To the fashion industry, the shows just
finished in New York and coming up in
London, Milan and Paris are as big as
it gets.
“Pittsburgh Post-Gazette,” February 21,
1999
…London’s enfant terrible, Alexander
McQueen, plans to hit New York next
season. And that news has a few stiff
upper lips trembling. In The Sunday
Times of London recently, style scribe
Colin McDowell wrote, “Most devastating
of all for London’s esteem as a fashion
center, it looks as if our No. 1
international star, Alexander McQueen,
will also start to show his own-label
collection [in New York] next October.”
“Daily News,” (New York), February 15,
1999
Each year, Mrs. Johnson travels to the
fashion capitals of the world including
Paris, Milan, Rome, London, New York
and Los Angeles to purchase garments by
internationally-acclaimed designers.”
“Jet,” February 15, 1999
Applicant does not dispute that London is a well-known
geographic term, and that the goods on which its mark is
intended to be used will not originate in London. In this
connection, we note that applicant is a Delaware
corporation which is located in Los Angeles. Nor has
Ser. No. 75/285,708
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applicant argued that the mark LONDON BEAT does not have a
geographic significance.2
The NEXIS evidence submitted by the Examining Attorney
clearly demonstrates a goods/place association between
London and clothing items. London is referred to
throughout these articles as a center of fashion. Thus, we
find that LONDON BEAT is geographically deceptively

2 Applicant does make reference to the inclusion of the term
LONDON in third-party registrations (which were not properly made
of record) as part of its argument that there is no goods/place
association between London and clothing. Apparently it is
applicant’s position that, in the same manner that third-party
registrations which contain a particular term can be used to
show, in a likelihood of confusion analysis, that the term has
been adopted by those in the industry for its suggestive
significance, third party registrations can be used, in cases
involving geographic refusals, to show that the geographic term
is suggestive of a certain style. It is not clear to us how such
asserted suggestiveness would rebut evidence of a goods/place
association, and we are not persuaded that it is appropriate to
use the third-party registrations in an analysis of geographic
descriptiveness in the same manner they are used in a
determination of likelihood of confusion. There are many reasons
why third-party LONDON marks may have registered which have
nothing to do with a suggestive significance of London, including
the fact that the goods do emanate from London, and the
registrations issued pursuant to Section 2(f) of the Act, or
LONDON is used in such a manner in the mark that consumers would
not view the entire mark as having a geographic significance. In
any event, as we stated above, the third-party registrations are
not properly of record, and have not been considered. To the
extent that applicant is asserting that LONDON BEAT is suggestive
of a particular style from London, the Examining Attorney has
correctly pointed out that there is no evidence of a particular
London style. The Court, in In re Wada, supra, aff’g 48 USPQ2d
1689 (TTAB 1998), accepted the Board’s finding that the primary
geographic significance of NEW YORK was not lost by the addition
of WAYS GALLERY. So, too, in this case, the addition of BEAT to
LONDON does not avoid the primary geographic significance of the
mark.
Ser. No. 75/285,708
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misdescriptive, and affirm the refusal of registration
under Section 2(e)(3).
Moreover, because of the association of London with
fashionable clothing, we further find that the geographic
misrepresentation would be material to the decision to
purchase the goods. Accordingly, we affirm the refusal of
registration under Section 2(a).
In reaching these conclusions we have considered, but
reject, applicant’s argument that consumers would not make
a goods/place association between clothing and London
because the articles reference designers from countries
other than England who merely show their clothing in
London. Several of the articles make reference to English
designers, while other articles clearly discuss London as a
fashion center.
Nor are we persuaded by applicant’s argument that the
evidence shows an association between London and couture
goods, while applicant’s goods are athletic sportswear and
swimwear, and no goods/place association has been shown
with respect to those goods. Applicant’s identification of
goods is not limited to athletic sportswear and swimwear;
the identification includes dresses, skirts, jackets, and
pants, which can be designer clothing. Further, there is
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no evidence in this record that designers do not produce
sportswear and swimwear.
Finally, applicant relies on the fact that its
predecessor-in-interest had previously filed an intent-to-
use application for the same mark for the same goods, and
that in March 1994 this application was passed to
publication. Although the application was subsequently
abandoned for failure to file a Statement of Use, applicant
argues that the fact that an Examining Attorney had
previously found the mark to be registrable should engender
a similar result for the present application.
As the Examining Attorney has pointed out, the Office
is not bound by a prior registration if to issue a
registration would be contrary to the statute. In the
present case, applicant did not have a prior registration
and, as the Examining Attorney also points out, the fact
that an intent-to-use application is approved for
publication does not guarantee that a mark will register,
since issues may arise in the examination of the Statement
of Use which may result in a further ground for refusal.
In any event, our decision in the present appeal must be
based on the evidence in the record, and the law as it has
been interpreted at the present time. In this connection,
we note that many of the cases cited by applicant and the
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Examining Attorney, as well as the cases cited herein, had
not been decided in 1994.
Decision: The refusals of registration pursuant to
Sections 2(a) and 2(e)(3) are affirmed.
E. J. Seeherman
E. W. Hanak
D. E. Bucher
Administrative Trademark Judges
Trademark Trial and Appeal Board