Dwain Barnes

Trademark Trial and Appeal Board

Jun 25, 2015

No. 85873404 (T.T.A.B. Jun. 25, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 25, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Barnes
_____

Serial No. 85873404
_____

Matthew H. Swyers of The Trademark Company PLLC,
for Dwain Barnes.
Pamela Y. Willis, Trademark Examining Attorney, Law Office 106,
Mary I. Sparrow, Managing Attorney.
_____

Before Bergsman, Wellington and Gorowitz,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Dwain Barnes (“Applicant”) seeks registration on the Principal Register of the
mark THE APPLACHIAN TRAIL RACE (in standard characters) for
Organizing a sporting event, namely a 2,200 Appalachian
Trail mile endurance run from Georgia to Maine, in
International Class 41.1
Applicant disclaimed the exclusive right to use the word “Race.”

1 Application Serial No. 85873404 was filed on March 12, 2013, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
Serial No. 85873404
- 2 -

The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(e)(2) of the Trademark Act of 1946, 15 U.S.C. § 1052(e)(2), on
the ground that THE APPLACHIAN TRAIL RACE is primarily geographically
descriptive.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Preliminary Issue
The drawing of the mark in the application is THE APPLACHIAN TRAIL
RACE, with the word “Appalachian” misspelled. The Trademark Examining
Attorney noted the misspelling in her June 23, 2013 Office action, but Applicant did
not correct the misspelling. We note, however, that throughout the prosecution of
the application, Applicant’s counsel refers to the mark as THE APPALACHIAN
TRAIL RACE with the word “Appalachian” spelled correctly. For purposes of the
appeal, we consider the mark to include the correct spelling of the word
“Appalachian.”2

2 Even if “Appalachian” is supposed to be “Applachian,” the misspelling of “Appalachian”
would not change our opinion because the mere misspelling or variant of the name of a
geographic location is considered the equivalent of the actual name for purposes of
determining the primary meaning of the mark. See In re Jonathan Drew, Inc., 97 USPQ2d
1640, 1642 (TTAB 2011) (finding the primary significance of KUBA to be “Cuba” and
holding the mark KUBA KUBA primarily geographically deceptively misdescriptive of
cigars); Stabilisierungsfonds fur Wein v. Peter Meyer Windery GmbH, 9 USPQ2d 1073, 1076
(TTAB 1988) (finding the mark GOLDENER TROPPEN to be a misspelling of
“Goldtropfchen” and holding the mark deceptive for wine not from that region in West
Germany); see also Bureau Nat’l Interprofessionnel Du Cognac v. Int’l Better Drinks Corp., 6
USPQ2d 1610, 1625 (TTAB 1988) (finding the mark COLAGNAC to be a misspelling of
Serial No. 85873404
- 3 -

II. Applicable Law
To establish a prima facie case for refusal to register a mark as primarily
geographically descriptive, the Trademark Examining Attorney must show that:
(1) the primary significance of the mark is a generally known geographic
location; and
(2) purchasers would be likely to believe that the goods or services originate in
the geographic place identified in the mark.
See In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 3
USPQ2d 1450, 1452 (Fed. Cir. 1987); In re Hollywood Lawyers Online, 110 USPQ2d
1852, 1853 (TTAB 2014).
If the goods or services do in fact emanate from the place named in the mark, the
goods or services/place association can be presumed. In re Hollywood Lawyers
Online, 110 USPQ2d at 1853; In re Carolina Apparel, 48 USPQ2d 1542, 1543
(TTAB 1998). Finally, “the 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.” JT
Tobacconists, 59 USPQ2d 1080, 1082 (TTAB 2001) (MINNESOTA CIGAR
COMPANY primarily geographically descriptive of cigars from Minnesota).
In the June 25, 2013 Office Action, the Trademark Examining Attorney
submitted an excerpt from the National Park Service website (nps.gov) regarding
the Appalachian National Scenic Trail.

“Cognac” or a combination of the terms “Cola” and “Cognac” and holding the mark
primarily geographically deceptively misdescriptive of liqueur).
Serial No. 85873404
- 4 -

Footpath for the People
The Appalachian Trail is a 2,184 mile long public footpath
that traverses the scenic, wooded, pastoral, wooded, wild,
and culturally resonant lands of the Appalachian
Mountains. Conceived in 1921, built by private citizens,
and completed in 1937, today the trail is managed by the
National Park Service, U.S. Forest Services, Appalachian
Trail Conservancy, numerous state agencies and
thousands of volunteers.
In addition, the Trademark Examining Attorney submitted the definition of the
“Appalachian Trail from the Yahoo! Education website (education.yahoo.com) which
provided the following definition:
Appalachian Trail
A hiking path of the eastern United States extending
about, 3,298 km (2,050 mi) from Mount Katahdin in
central Maine to Springer Mountain in northern Georgia.
It is the world’s longest continuous mountain trail.
In his April 7, 2014 Response to an Office Action, Applicant submitted the
Wikipedia excerpt for the “Appalachian Trail” which provided the following
information:
The Appalachian National Scenic Trail, generally known
as the Appalachian Trail or simply the A.T. is a marked
hiking trail in the eastern United States extending
between Springer Mountain in Georgia and Mount
Katahdin in Maine. …
The Appalachian Trail is famous for its many hikers,
some of whom, called the thru-hikers, attempted to hike it
in its entirety in a single season. Many books, memoirs,
web sites and fan organizations are dedicated to this
pursuit.
The evidence demonstrates that the Appalachian Trail is a generally known
geographic location. Since Applicant’s services consist of the organizing of a 2,200
Serial No. 85873404
- 5 -

Appalachian Trail mile endurance run which Applicant admits “takes place, in part,
on the Appalachian Trail,”3 the services/place association may be presumed.
Accordingly, we find that the mark THE APPALACHIAN TRAIL RACE for
“organizing a sporting event, namely a 2,200 Appalachian Trail mile endurance run
from Georgia to Maine” is primarily geographically descriptive.
Applicant argues that “the mark as a whole creates a separate meaning in
connection with the services that is not geographic.”4 Applicant does not explain
what that alternative meaning may be and it is not apparent to the panel.
Applicant also argues that the USPTO has registered other marks containing
geographic terms for races “presumably, [because] there is no goods/place
association between the mark(s) and the services.”5 First, Applicant made of record
only four registered marks. The existence of four registrations do not establish that
the USPTO has adopted a practice registering geographic names for races because
there is no services/place association. Moreover, in one of the registrations,
Registration No. 1799,726 for the mark LA ROAD RUNNERS and design, the
registrant disclaimed the exclusive right to use geographic designation “L.A.”
Further, it is well established that each case must be decided on its own facts
and that the Board is not bound by prior decisions involving different records. See
In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001); In re Datapipe, Inc., 111 USPQ2d 1330, 1336 (TTAB 2014). The question of

3 August 18, 2014 Response to Office Action.
4 4 TTABVUE 7.
5 4 TTABVUE 9.
Serial No. 85873404
- 6 -

whether a mark is merely descriptive is determined based on the evidence of record
at the time each registration is sought. In re theDot Commc’ns Network LLC, 101
USPQ2d 1062, 1064 (TTAB 2011); In re Nett Designs, Inc., 57 USPQ2d at 1566.
Finally, Applicant argues that because the line between a suggestive mark and a
descriptive mark is very thin, doubt should be resolved in favor of Applicant.
However, on the record before us, there is no doubt that the mark THE
APPALACHAIN TRAIL RACE or THE APPLACHIAN TRAIL RACE is primarily
geographically descriptive.
Decision: The refusal to register Applicant’s mark THE APPLACHIAN TRAIL
RACE is affirmed.