Cheezwhse.com

Trademark Trial and Appeal Board

Jan 25, 2008

No. 78694191 (T.T.A.B. Jan. 25, 2008)

Mailed:
Jan. 25, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Cheezwhse.com, Inc.
________

Serial No. 78694191
_______

William Dunnegan of Perkins & Dunnegan for Cheezwhse.com,
Inc.

Tasneem Hussain, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Seeherman, Quinn and Grendel, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Cheezwhse.com, Inc., applicant herein, seeks
registration on the Principal Register of the mark
NORMANDIE BRIE (in standard character form) for goods
identified in the application as “cheese.”1

1 The application was filed on August 17, 2005, and is based on
applicant’s asserted bona fide intention to use the mark in
commerce. Trademark Act Section 1(b), 15 U.S.C. §1051(b).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 78694191
2
The Trademark Examining Attorney has issued final
refusals to register on the grounds (1) that applicant has
failed to comply with the Trademark Examining Attorney’s
request for information under Trademark Rule 2.61(b), 37
C.F.R. §2.61(b); and (2) that the applied-for mark is
primarily geographically descriptive of the goods and thus
unregistrable under Trademark Act Section 2(e)(2), 15
U.S.C. §1052(e)(2).
We affirm each of the refusals to register.
We turn first to the refusal under Trademark Rule
2.61(b). That rule provides that “[t]he examiner may
require the applicant to furnish such information and
exhibits as may be reasonably necessary to the proper
examination of the application.” If an applicant fails to
comply with the Trademark Examining Attorney’s requirement
under Trademark Rule 2.61(b), registration of applicant’s
mark may be refused on that basis. See In re DTI
Partnership LLP, 67 USPQ2d 1699 (TTAB 2003).
In the first Office action, the Trademark Examining
Attorney required applicant to provide information as to
the geographic origin of applicant’s goods. In its
response to the Office action, applicant failed to even
acknowledge the requirement, much less comply with it. The
Trademark Examining Attorney made the requirement final in
Ser. No. 78694191
3
the final Office action. In its appeal brief (the next
paper applicant filed), applicant again failed to
acknowledge the requirement. The Trademark Examining
Attorney’s appeal brief reiterated the requirement.
Applicant did not file a reply brief or otherwise respond
to the requirement. In short, despite repeated requests
and reminders, applicant did not comply with or even
acknowledge the Trademark Examining Attorney’s requirement
for information.
In view thereof, the refusal to register based on
applicant’s failure to comply with Trademark Rule 2.61(b)
is affirmed. Moreover, and as discussed below, because
applicant has inexcusably failed to provide the requested
information regarding the geographic origin of its goods,
our findings with respect to the substantive Section
2(e)(2) refusal include a presumption, unfavorable to
applicant, that applicant’s goods in fact originate or will
originate in or from the place named in the mark.
We turn next to the refusal under Trademark Rule
2(e)(2). The test for determining whether a mark is
primarily geographically descriptive is whether (1) the
primary significance of the mark is the name of a place
known generally to the public, and (2) the public would
make a goods/place association, that is, believe that the
Ser. No. 78694191
4
goods identified in the application originate in that
place. If these elements are met, and if the applicant’s
goods in fact originate or will originate in or from the
place named in the mark, then the mark is primarily
geographically descriptive of the goods. See In re Societe
Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 3
USPQ2d 1450 (Fed. Cir. 1987); In re Joint-Stock Co. “Baik”,
80 USPQ2d 1305 (TTAB 2006); and In re JT Tobacconists, 59
USPQ2d 1080 (TTAB 2001).
Under the first element of the Section 2(e)(2)
refusal, we find that the primary significance of the mark
NORMANDIE BRIE is that of a generally known geographic
place, i.e., Normandy, France. First, the record shows
that “Normandy” is the name of a generally known geographic
place. Webster’s New Geographical Dictionary (1984), at
855, states that Normandy is an “historical region of NW
France,” and that it was the site of the famous Battle of
Normandy in 1944 during World War II.2 Both the Trademark
Examining Attorney and applicant have submitted and relied
upon the Wikipedia entry for “Normandy,” which states that
Normandy is “a geographical region in northern France.”

2 The Board may take judicial notice of dictionary definitions.
See University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).

Ser. No. 78694191
5
Applicant does not dispute that Normandy is a generally-
known geographic place.
Next, the record shows that NORMANDIE is the French
spelling for “Normandy,” and that it refers to the same
region of France. See Webster’s New Geographical
Dictionary (1984) at 855 (“or Fr. Normandie”), the
Wikipedia entry for “Normandy” (“in French: Normandie”),
the entry “Normandie” in WordNet 2.0 (“Syn. Normandie,
Normandy), and the entry at www.ultralingua.net (“Normandy…
also called Normandie”). Based on this evidence, we find
that consumers would recognize NORMANDIE as the equivalent
of NORMANDY.
Next with respect to the first element of the refusal,
the record shows that the word BRIE appearing in
applicant’s mark is a generic term for the goods identified
in applicant’s application, i.e., “cheese.” “Brie” is
defined as “a soft, mold-ripened, whole-milk cheese.”
(Webster’s II New Riverside University Dictionary (1988) at
201). It also is defined as “soft cheese with whitish
rind.” (MSN Encarta Dictionary). It is settled that the
primarily geographic significance of a term (like
NORMANDIE) is not overcome by the addition of a generic
term (like BRIE). See In re J.T. Tobacconists, supra; In
Ser. No. 78694191
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re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998); In re
California Pizza Kitchen, Inc., 10 USPQ2d 1704 (TTAB 1988).
Finally with respect to the first element of the
refusal, we are wholly unpersuaded by applicant’s
contention that because NORMANDIE in its mark ends with an
“IE” rather than a “Y”, the primary significance of the
word NORMANDIE in its mark is that of the former ocean
liner SS NORMANDIE. First, applicant’s mark is not SS
NORMANDIE BRIE, it is simply NORMANDIE BRIE. Second, as
discussed above, the name of the French geographic region
at issue here is and can be spelled either as NORMANDIE or
as NORMANDY. On this record, we find that the primary
geographical significance of NORMANDIE is not displaced or
overcome by the fact that there once was an ocean liner
named SS NORMANDIE. See In re Opryland USA Inc., 1 USPQ2d
1409 (TTAB 1986); In re Cookie Kitchen, Inc., 228 USPQ 873
(TTAB 1986).
For the reasons discussed above, we find that the
primary significance of NORMANDIE BRIE is its geographic
significance as the name of a well-known place, i.e.,
Normandy, France. The first element of the Section 2(e)(2)
refusal accordingly is established.
We next find, under the second element of the Section
2(e)(2) refusal, that a goods/place association exists
Ser. No. 78694191
7
between applicant’s goods, i.e., cheese, and the geographic
place named in the mark, i.e., Normandy. It is settled
that the requisite goods/place association may be presumed
if the applicant’s own goods originate or will originate in
or from the place named. See In re Joint-Stock Co. “Baik”,
supra; In re JT Tobacconists, supra; In re California Pizza
Kitchen Inc., supra; and In re Handler Fenton Westerns,
Inc., 214 USPQ 848 (TTAB 1982). We find that such a
presumption is warranted in this case.
First, as discussed above, because applicant failed to
comply with the Rule 2.61(b) requirement to specify the
geographic origin of its goods, we are presuming for
purposes of this Section 2(e)(2) refusal that applicant’s
goods in fact originate or will originate in or from
Normandy. Because applicant’s goods are presumed to
originate in or from Normandy, we may further presume that
the requisite goods/place association exists between cheese
and Normandy.
Second, the evidence of record independently supports
a finding that applicant’s own brie cheese comes from
Normandy.3 The website www.gourmetretailer.com includes a

3 The presence of this evidence in the record (which was
submitted by the Trademark Examining Attorney) does not obviate
the Rule 2.61(b) refusal discussed above. Applicant’s failure to
comply with the Trademark Examining Attorney’s proper requirement
warrants affirming the Rule 2.61(b) refusal regardless of any
Ser. No. 78694191
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“Product Preview” listing for applicant’s brie cheese,
which states that applicant “debuts Normandie Brie, a
double-crème, soft-ripened cheese made in France. Soil
from ancient volcanoes, gentle rain, and sea spray create
the unique grass on which the Normandy cows are fed to make
buttery, rich milk for this luscious cheese.” Likewise,
applicant’s own website, www.normandiebrie.com, advertises
that “[w]e take you to one of our cooperatives in Normandy,
France, to meet the people and the cows that help make our
Normandie Brie so delicious.”
Because applicant’s own brie cheese presumptively and
apparently in fact originates in or from Normandy, we may
presume that the requisite goods/place association exists
between the goods identified in the application and the
place named in the mark.
Moreover, and regardless of the actual origin of
applicant’s own cheese, the evidence of record establishes
that a goods/place association exists between Normandy and
cheese. Indeed, the record establishes that Normandy is
famous for its cheeses. The website www.france-for-
visitors.com states that “the most famous products of

other evidence which might be in the record. This is especially
so given the absence of any indication from applicant that it
believed or assumed that it did not need to respond to the
requirement because relevant evidence otherwise appeared in the
record.
Ser. No. 78694191
9
Normandy’s meadow-munching cows are, of course, their
cheeses.” The Wikipedia entry for “Normandy” submitted by
applicant states that “[t]he dairy produce of the region is
renowned: its cheeses are world famous….” The website
www.cuisinenet.com, under the heading “Cheese in France,”
states that “Normandy is famous for her dairy products and
makes many of France’s best cheeses.”
Based on this evidence, we find that there is a
goods/place association between cheese and Normandy. The
second element of the Section 2(e)(2) refusal therefore is
established.
In short, we find that the primary significance of
applicant’s NORMANDIE BRIE mark is the name of a generally-
known geographic location, i.e., Normandy, France. We also
find that a goods/place association exists between cheese
and Normandy, France. Based on these findings, and because
applicant’s goods presumptively and/or actually originate
or will originate in or from Normandy, France, we conclude
that applicant’s mark is primarily geographically
descriptive of applicant’s goods, and that applicant’s mark
accordingly is unregistrable under Trademark Act Section
2(e)(2).
In summary, we affirm the Trademark Examining
Attorney’s refusal based on applicant’s failure to comply
Ser. No. 78694191
10
with the request for information under Trademark Rule
2.61(b). We also affirm the refusal to register under
Trademark Act Section 2(e)(2).
Decision: The refusals to register are affirmed.