Cheezwhse.com, Inc.

Trademark Trial and Appeal Board

Feb 1, 2008

No. 78694122 (T.T.A.B. Feb. 1, 2008)

Mailed:
Feb. 1, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Cheezwhse.com, Inc.
________

Serial No. 78694122
_______

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 CAMEMBERT (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 A
PRECEDENT OF THE TTAB
Ser. No. 78694122
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); (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); and (3) in the alternative to the
Section 2(e)(2) refusal, that the mark is primarily
geographically deceptively misdescriptive of the goods and
thus unregistrable under Trademark Act Section 2(e)(3).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).

2 This alternative Section 2(e)(3) refusal is also stated to be
pursuant to Trademark Act Section 2(a). We deem the refusal to
be pursuant solely to Trademark Act Section 2(e)(3). See In re
South Park Cigar Inc., 82 USPQ2d 1507 (TTAB 2007).

Ser. No. 78694122
3
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
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.
Ser. No. 78694122
4
Similarly with respect to the alternative Section 2(e)(3)
refusal, we alternatively presume, unfavorably to
applicant, that applicant’s goods do not or will not
originate in or from the place named in the mark.
We turn next to the refusal under Trademark Section
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
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 CAMEMBERT 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
Ser. No. 78694122
5
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.3 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.”
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 CAMEMBERT appearing in

3 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. 78694122
6
applicant’s mark is a generic term for the goods identified
in applicant’s application, i.e., “cheese.” “Camembert” is
defined as “soft cheese: a small round soft French cheese…”
(MSN Encarta), and as “a creamy, mold-ripened cheese that
softens on the inside as it ages” (Webster’s II New
Riverside University Dictionary (1988) at 222). It is
settled that the primarily geographic significance of a
term (like NORMANDIE) is not overcome by the addition of a
generic term (like CAMEMBERT). See In re J.T.
Tobacconists, supra; In 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 CAMEMBERT, it is simply NORMANDIE CAMEMBERT.
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
Ser. No. 78694122
7
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 CAMEMBERT 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
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
Ser. No. 78694122
8
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, 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, Normandy is famous for its cheeses,
generally, and for its Camembert cheese in particular. The
website www.france-for-visitors.com states that “the most
famous products of 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 and
include Camembert….” 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. Camembert, a soft cheese like Brie, is one
of the most famous.” The website www.fromagefrancais.com
states that “Camembert de Normandie” is “a very popular
French cheese coming from the Normandie region in France….”
The website www.camembert-france.com states that “Camembert
is a lovely village in Normandy and home of the world-
famous Camembert cheese.”
Ser. No. 78694122
9
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 accordingly
is established.
In short, we find that the primary significance of
applicant’s NORMANDIE CAMEMBERT 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 we are presuming that applicant’s
goods 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).
We turn now to the Trademark Examining Attorney’s
alternative refusal under Trademark Act Section 2(e)(3) on
the ground that applicant’s mark is primarily
geographically deceptively misdescriptive of applicant’s
goods. This refusal is proper if it is established that
(1) the primary significance of the mark is the name of a
generally-known geographic place, (2) the applicant’s goods
do not or will not originate in the place named, (3)
purchasers would be likely to believe that the goods
Ser. No. 78694122
10
originate in the place named (i.e., that a goods/place
association exists), and (4) the misrepresentation as to
the geographic origin of the goods is or would be a
material factor in the purchaser’s decision to purchase the
goods. See In re California Innovations Inc., 329 F.3d
1334, 66 USPQ2d 1853 (Fed. Cir. 2003); In re South Park
Cigar Inc., supra.
For all of the reasons discussed above in connection
with the Section 2(e)(2) refusal, we find that the primary
significance of applicant’s NORMANDIE CAMEMBERT mark is
that of a generally-known geographic location, i.e.,
Normandy, France. We likewise find that the evidence of
record establishes that there is a goods/place association
between applicant’s goods, cheese, and the place named in
the mark, Normandy. Those two elements of the Section
2(e)(3) refusal therefore are established.
As noted above, applicant failed to comply with the
Trademark Examining Attorney’s Rule 2.61(b) requirement for
information regarding the geographic origin of applicant’s
goods. In such circumstances, we deem it appropriate to
presume, for purposes of this Section 2(e)(3) refusal (and
in the alternative to our finding for purposes of the
Section 2(e)(2) refusal), that applicant’s cheese in fact
will not originate in or from Normandy, France. The third
Ser. No. 78694122
11
element of the Section 2(e)(3) refusal therefore is
established.
Under the final element of the refusal, we find that
the evidence of record establishes that applicant’s mark’s
misrepresentation as to the geographic origin of
applicant’s cheese, i.e., that the cheese originates in or
from Normandy, France, is or would be material to the
decision to purchase the goods. We base this finding on
the same evidence we discussed above in connection with the
second element of the Section 2(e)(2) refusal. That
evidence not only establishes that a goods/place
association exists between cheese and Normandy, but it also
establishes that cheese is a principal product of Normandy
and that Normandy indeed is famous for its cheeses,
including its Camembert cheese. This evidence suffices to
establish the materiality element of the Section 2(e)(3)
refusal. See In re California Innovations, supra; In re
South Park Cigar Inc., supra.
In short, we find that the evidence of record
establishes each element of the alternative Section 2(e)(3)
refusal. The primary significance of the mark is the name
of a generally-known geographic location, i.e., Normandy,
France. A goods/place association exists between cheese
and Normandy. Applicant’s goods do not or will not
Ser. No. 78694122
12
originate in or from Normandy. The mark’s
misrepresentation of the geographic origin of the goods is
or would be material to the decision to purchase the goods.
Thus, we conclude that NORMANDIE CAMEMBERT is primarily
geographically deceptively misdescriptive of “cheese,” and
that applicant’s mark accordingly is unregistrable under
Trademark Act Section 2(e)(3).
In summary, we affirm all three of the Trademark
Examining Attorney’s refusals. First, we affirm the
refusal to register which is based on applicant’s failure
to comply with the Trademark Examining Attorney’s proper
Rule 2.61(b) requirement for information as to the
geographic origin of applicant’s goods. Second, based on
our presumption that applicant’s goods originate or will
originate in or from the place named in the mark, we find
that applicant’s mark is primarily geographically
descriptive of applicant’s goods, and we therefore affirm
the Section 2(e)(2) refusal. Third, based on our
alternative presumption that applicant’s goods do not or
will not originate in or from the place named in the mark,
we find that applicant’s mark is primarily geographically
deceptively misdescriptive of applicant’s goods, and we
therefore affirm the alternative Section 2(e)(3) refusal.
Decision: The refusals to register are affirmed.