Deep South Studios LLC

Trademark Trial and Appeal Board

Feb 9, 2017

No. 86896313 (T.T.A.B. Feb. 9, 2017)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: February 9, 2017
UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Deep South Studios LLC
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Serial Nos. 86896313 and 86896327
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Benjamin W. Janke of Baker Donelson Bearman Caldwell & Berkowitz, PC
for Deep South Studios LLC.

Daniel Stringer, Trademark Examining Attorney, Law Office 103
(Michael Hamilton, Managing Attorney).
_____

Before Quinn, Adlin and Goodman, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Deep South Studios LLC (“Applicant”), which is based in New Orleans, seeks
Principal Register registrations for the mark DEEP SOUTH STUDIOS, in standard
characters and the form shown below

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for “movie studio services.”1 Because he found that the term DEEP SOUTH is
primarily geographically descriptive of Applicant’s services, the Examining Attorney
refused registration of the standard character mark under Section 2(e)(2) of the
Trademark Act, 15 U.S.C. § 1052(e)(2), and refused registration of the design mark
absent a disclaimer of all of the wording therein (DEEP SOUTH as primarily
geographically descriptive and STUDIOS as merely descriptive). After the refusals
became final, Applicant appealed and Applicant and the Examining Attorney filed
briefs.2
The Evidence
According to the Macmillan Dictionary, “the Deep South” means “the states of
Alabama, Georgia, Louisiana, Mississippi, and South Carolina in the southern part
of the U.S.” Office Action of May 24, 2016 at 2.3 The American Heritage dictionary
defines “Deep South” as “[a] region of the southeast United States, usually comprising
the states of Alabama, Georgia, Louisiana, Mississippi, and South Carolina,” in other
words, the exact same states identified by the Macmillan Dictionary. Id. at 12.4 The
Merriam-Webster Dictionary defines “Deep South” similarly, in that it also includes

1 Application Serial Nos. 86896327 and 86896313, respectively, each filed February 3, 2016
under Section 1(b) of the Trademark Act, based on an alleged bona fide intent to use the mark
in commerce. The ‘313 application includes this description of Applicant’s design mark: “The
mark consists of an elongated hexagon containing a fleur-de-lis above the words ‘DEEP
SOUTH’ in capital letters. Below this is the word STUDIOS in smaller letters.”
2 These appeals involve common questions of law and fact and the records are substantially
similar. Accordingly, we consolidate and decide both appeals in this single decision. See In
re Binion, 93 USPQ2d 1531, 1533 (TTAB 2009); TBMP § 1214 (2017). Citations are to the
record in Application Serial No. 86896313.
3 http://www.macmillandictionary.com/dictionary/american/the-deep-south.
4 https://www.ahdictionary.com/word/search.html?q=Deep%20South.
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the same states, including Louisiana, but the definition is broader: “region SE United
States – usually considered to include Alabama, Georgia, Louisiana, Mississippi,
North Carolina, South Carolina, and all or part of the adjacent states of Florida,
Virginia, Tennessee, Arkansas & Texas.” Id. at 6.5 According to Wikipedia and the
New World Encyclopedia, the Deep South “is a cultural and geographic subregion in
the Southern United States … Today, the Deep South is usually delineated as being
those states and areas where cultural elements most often thought of as ‘Southern’
exist in their most concentrated form.” Furthermore, “[m]ost definitions include the
states Georgia, Alabama, South Carolina, Mississippi, and Louisiana,” with Arkansas
sometimes included, as well as “[a]djoining areas of East Texas, West Tennessee, and
North Florida.” Id. at 14-23.6
The Examining Attorney also relies on evidence depicting how third parties use
the term DEEP SOUTH. For example:7
TrekAmerica offers an eight-day tour, “Deep South Budget
Lodging Tour,” which begins and ends in New Orleans.

The book Mountain Biking the Deep South includes 77
rides in Louisiana, Mississippi, Alabama and Georgia.

A blurb on the “modernhealthcare.com” website entitled
“Medicaid expansion hits Deep South” discusses a
Louisiana patient who was able to obtain Medicaid
coverage.

5 http://www.merriam-webster.com/dictionary/Deep%20South.
6 http://www.newworldencyclopedia.org/entry/Deep_South and
https://en.wikipedia.org/wiki/Deep_South.
7 We have not relied upon evidence which appears to be from foreign sources.
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The Urban Dictionary defines “Deep South” as “a cultural
and geographic subregion of the American South,”
including the “core states” of Alabama, Georgia, Louisiana
and Mississippi.

The G Adventures website (“gadventures.com”) offers a
nine-day tour, “Highlights of the Deep South,” which
includes New Orleans.

The Deep South Rugby Referees Society website
(“deepsouthrugbyrefs.com”) indicates that the group serves
Alabama, Louisiana, Mississippi and the Florida
panhandle, and offers an officiating course in New Orleans.

A Boston Globe article entitled “A Boston-New Orleans
Connection Forged After the Civil War” states that “In
June 1880, with the wounds of the Civil War still fresh,
New Orleans sent emissaries from the Deep South to help
Boston commemorate the 105th anniversary of the Battle of
Bunker Hill.”

The Pelican Publishing Company offers a book entitled
Louisiana, the Jewel of the Deep South, which covers
“Louisiana’s statehood in 1812 to designation of the fleur-
de-lis as the state symbol in 2008.”

A Wikipedia article entitled “New Orleans in the American
Civil War” indicates that “Antebellum New Orleans was
the commercial heart of the Deep South ….”

Office Action of June 22, 2016 at 21-124.

Finally, the Examining Attorney relies on the “Why Louisiana” section of
Applicant’s website, which touts the benefits of “filmmaking and television
production” in Louisiana:
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Id. at 17.
Applicant does not take issue with this evidence as a general matter, but instead
counters with its own evidence that New Orleans, its home base, is within Louisiana
but not part of the Deep South. For example, one book states: “South Carolina,
Georgia, Alabama, Mississippi, and Louisiana are commonly considered the Deep
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South states, although parts of these states don’t meet the criteria, and parts of
adjoining states do.” The book goes on to identify “South Louisiana” as one of “three
big exceptions” which are “southern for some purposes but not for others,” stating
that the area “is Southern, sure enough, but with a Gallic twist that has caused us
all kinds of headaches in this book. New Orleans is – well, something else.” Office
Action Response of June 9, 2016 at 14-17 (John Shelton Reed and Dale Volberg Reed,
1001 Things Everyone Should Know About the South (1996)). Applicant claims that
another book depicts the New Orleans area as separate from the Deep South:

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Applicant’s Appeal Brief at 88 Finally, Applicant cites to a 2010 Internet message
board posting from an unidentified author stating that while New Orleans “has Deep
South influences its (sic) not a typicall (sic) Deep South city the way let’s say
Birmingham, Atlanta, or Nashville are.”9 Id. at 9.10

8 Applicant failed to make the relevant passages from this book of record, but appears to
have reproduced excerpts of the book in its Office Action Response of June 9, 2016. Because
the Examining Attorney has not objected to Applicant’s apparent reproduction of this
evidence in its Office Action Response or Appeal Brief, we have considered it.
9 This evidence was also not properly made of record but the Examining Attorney has not
objected to it so we have considered it for whatever probative value it might have.
10 Applicant and the Examining Attorney also introduced or cited dueling third-party
registrations. Specifically, the Examining Attorney relies on five registrations for marks
containing DEEP SOUTH in which DEEP SOUTH is disclaimed, registered on the
Supplemental Register or registered on the Principal Register with a claim of acquired
distinctiveness. Office Action of June 22, 2016 at 2-14. Applicant relies on a mere list in its
Appeal Brief of four third-party registrations in which marks containing DEEP SOUTH are
allegedly registered on the Principal Register without a disclaimer or claim of acquired
distinctiveness. Applicant’s Appeal Brief at 11. The Examining Attorney did not object to,
and addressed, this list in his Appeal Brief, so we have considered it. However, weighing all
of the third-party registrations together, and assuming that Applicant accurately
characterized those on its list, we find that the third-party registrations do not support
Applicant’s or the Examining Attorney’s position. In short, “[t]he Board must decide each
case on its own merits … Even if some prior registrations had some characteristics similar to
[Applicant’s] application, the PTO’s allowance of such prior registrations does not bind the
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Analysis
In order to establish that Applicant’s mark is primarily geographically
descriptive, the Examining Attorney must establish that: (1) the primary significance
of the mark sought to be registered is the name of a place known generally to the
public; (2) the public would make a services/place association, i.e. believe that the
services for which the mark is sought to be registered originate in that place;11 and
(3) the source of the services is the geographic region named in the mark. In re
Newbridge Cutlery Co., 776 F.3d 854, 113 USPQ2d 1445, 1448-49 (Fed. Cir. 2015)
(quoting In re Societe Generale Des Eaux Minerales De Vittel S.A., 824 F.2d 957, 3
USPQ2d 1450, 1452 (Fed. Cir. 1987) and In re Jacques Bernier, Inc., 894 F.2d 389, 13
USPQ 1725 (Fed. Cir. 1990)); TMEP § 1210.01(a) (2017). The Examining Attorney
has established each element.
The evidence makes clear that the primary significance of “Deep South” is a place
generally known to the public. Indeed, there is no evidence that the term’s meaning
is anything other than geographic. Moreover, books and reference works discuss the
Deep South region, with all agreeing it includes Louisiana; tours of the Deep South
region include visits to New Orleans and Louisiana; a group of rugby referees serving
Alabama, Louisiana, Mississippi and the Florida panhandle uses DEEP SOUTH in

Board or this court.” In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.
Cir. 2001).
11 “If the Trademark Examiner establishes such a prima facie case, an applicant may rebut
this showing with evidence ‘that the public would not actually believe the goods derive from
the geographic location identified by the mark.’” Newbridge Cutlery, 113 USPQ2d at 1449
(quoting In re Save Venice New York Inc., 259 F.3d 1346, 59 USPQ2d 1778, 1783 (Fed. Cir.
2001)).
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its trade name and offers a course in New Orleans; and the overwhelming majority
of third-party DEEP SOUTH registrations of record are owned by entities and
individuals from the Deep South region. Applicant does not dispute that the Deep
South is a generally known place, which includes Louisiana, nor does it counter the
voluminous evidence that the term’s primary significance is a geographic region
which includes Louisiana.
We presume that the public would believe that Applicant’s services originate in
the Deep South, because Applicant is based in Louisiana, which is universally
recognized to be in the Deep South. In re MCO Properties Inc., 38 USPQ2d 1154, 1155
(TTAB 1995) (“When it has been demonstrated that the primary significance of the
term is geographic, and the services of the applicant are in fact rendered from the
place the term names, a public association of the services with the place will be
presumed.”); In re Handler Fenton Westerns, Inc., 214 USPQ 848, 850 (TTAB 1982).12
This presumption is bolstered in this case by Applicant’s website, which includes an
entire section entitled “Why Louisiana,” explaining the advantages of rendering and
retaining movie studio services in that state, including that Louisiana: (1) “has
nurtured a blossoming film industry;” (2) has “[c]ost-effective skilled workforce, new
infrastructure, diverse locations, and a long-term commitment to the country’s most
aggressive film and entertainment tax incentives;” and (3) is “the second most

12 Even though Applicant’s website suggests that Louisiana is well-known for movie studio
services, this is not required for us to find Applicant’s mark primarily geographically
descriptive. In re Newbridge Cutlery, 113 USPQ2d at 1449; In re Cambridge Digital Systems,
1 USPQ2d 1659, 1661 (TTAB 1986).
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significant production hub in the United States.” In fact, while in some circumstances
“a geographical term in a mark may not be as readily perceived as indicating the
geographical origin of services as it does goods, simply because services are normally
rendered where the consumer is,” in this case Applicant’s website, and the nature of
its services, make clear that at least some of the services are rendered in Louisiana.
Cf. In re California Pizza Kitchen Inc., 10 USPQ2d 1704, 1706 (TTAB 1988).
Finally, there is no question that the source of the services is the Deep South,
because Louisiana is universally recognized to be part of the Deep South. Therefore,
the Examining Attorney has established that Applicant’s mark is primarily
geographically descriptive. Moreover, the requirement to disclaim the term
STUDIOS for Applicant’s “movie studio services” is obviously appropriate, and
Applicant does not argue to the contrary. In fact, Merriam-Webster defines “studio”
as “a place where movies are made.” Office Action of June 22, 2016 at 126-28.13
Applicant has not rebutted the Examining Attorney’s case. Applicant’s argument
that the term “Deep South” is “amorphous” and not the mark’s primary significance
is not well-taken. All evidence of record makes clear that DEEP SOUTH is a
geographic term, and that it includes Louisiana, the place where Applicant is based
and which it specifically touts on its website.

13 “[T]he presence of generic or highly descriptive terms in a mark which also contains a
primarily geographically descriptive term does not serve to detract from the primary
geographical significance of the mark as a whole.” In re JT Tobacconists, 59 USPQ2d 1080,
1082 (TTAB 2001).
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Applicant’s contention that the fleur-de-lis is “French influenced” and without
“any meaningful connection with any ‘Deep South’ imagery” is belied by the evidence
that the fleur-de-lis became Louisiana’s state symbol in 2008. See In re Nantucket
Allserve Inc., 28 USPQ2d 1144, 1145 (TTAB 1993) (“We believe that applicant’s labels
for its NANTUCKET NECTARS soft drinks … would cause the consuming public to
make a goods/place association. These labels bear the mark NANTUCKET
NECTARS above a picture of Nantucket Town ….”).
The evidence which indicates there are differences between New Orleans and
other parts of the Deep South is contradicted and far more ambiguous than Applicant
contends. First, all of the dictionary definitions and encyclopedia entries of record
identify Louisiana as part of the Deep South, without separately addressing New
Orleans. Second, the evidence upon which Applicant relies merely differentiates New
Orleans culturally and in other ways from other parts of the Deep South without
stating or arguing that New Orleans is not still part of the Deep South. Third, the
“general public” (Internet message board) evidence Applicant cites does not support
Applicant’s position, as the unidentified poster merely indicates that New Orleans is
not “typical” of the Deep South, even though it has “Deep South influences.” Fourth,
multiple tours of the Deep South include New Orleans, the Deep South Rugby
Referees Society serves Louisiana and offers a course in New Orleans and according
to Wikipedia, “Antebellum New Orleans was the commercial heart of the Deep
South.” Fifth, Applicant’s website stresses its location in Louisiana, which is
indisputably part of the Deep South, rather than its address in New Orleans
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specifically, so any consumers who perceive a difference between New Orleans and
the Deep South would be more likely to believe, to the extent there is a difference,
that Applicant’s services come from Louisiana generally rather than New Orleans
specifically, or to focus on Louisiana rather than New Orleans as the origin of the
services. Moreover, the “Why Louisiana” page on Applicant’s website impacts the
significance of the term DEEP SOUTH in Applicant’s mark, establishing or at least
strongly suggesting that it is primarily geographic. Finally, even if New Orleans is
not perceived to be part of the Deep South, New Orleans is at the very least extremely
close to the Deep South, which supports a finding that Applicant’s mark is primarily
geographically descriptive. In re Spirits of New Merced LLC, 85 USPQ2d 1614, 1617-
18 (TTAB 2007) (finding YOSEMITE BEER primarily geographically descriptive of
alcoholic beer originating “in the city of Merced, California, which is approximately
80 miles from Yosemite National Park,” stating “[s]ince the goods originate at or near
the place named in the mark, we can presume an association of applicant’s beer with
the park”); In re Joint-Stock Company “Baik,” 80 USPQ2d 1305, 1310 (TTAB 2006)
(“we presume a goods/place association [of vodka with BAIKALSKAYA meaning ‘from
Baikal’] because applicant is located near Lake Baikal, in the city of Irkutsk”). See
also In re Carolina Apparel, 48 USPQ2d 1542, 1543 (TTAB 1998) (“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 … It is clear that the primary significance of the designation CAROLINA
APPAREL, APPAREL being generic and disclaimed by applicant, is geographic.”).
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Conclusion
“The purpose of the proscription in Section 2(e)(2) of the Act against registration
of primarily geographically descriptive terms is to leave place names free for all
businesses operating in particular areas to inform customers where the goods or
services originate. It would be completely inconsistent with the objectives of the
Trademark Act” to register DEEP SOUTH for Applicant’s movie studio services
rendered in the Deep South unless applicant had claimed and proved that the term
has acquired secondary meaning. In re MCO Properties, 38 USPQ2d at 116.

Decision: The refusal to register the standard character mark in application Serial
No. 86896327 is affirmed. The refusal to register the design mark in application
Serial No. 86896313 in the absence of a disclaimer of DEEP SOUTH and STUDIOS
is also affirmed, but the decision with respect to this application will be set aside if,
within thirty days of the mailing date of this order, Applicant submits to the Board a
proper disclaimer of DEEP SOUTH and STUDIOS. Trademark Rule 2.142(g). The
disclaimer should be worded as follows: “No claim is made to the exclusive right to
use DEEP SOUTH or STUDIOS apart from the mark as shown.”