Eastern National

Trademark Trial and Appeal Board

Nov 29, 2001

No. 75503342 (T.T.A.B. Nov. 29, 2001)

11/29/01

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Eastern National
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Serial No. 75/503,342
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Robert E. Rosenthal for Eastern National.

Amy B. Hella, Trademark Examining Attorney, Law Office
110 (Chris A. F. Pedersen, Managing Attorney).
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Before Hanak, Hohein and Chapman, Administrative
Trademark Judges.

Opinion by Hanak, Administrative Trademark Judge.

On June 16, 1998 Eastern National (applicant) filed
an intent-to-use application seeking to register
INDEPENDENCE PARK INSTITUTE in typed drawing form for
publications; clothing; retail store and gift shop
services; educational and entertainment services;
promotional campaigns and services; and computer
services. In point of fact, applicant’s recitation of
goods and services was very detailed in that it specified
the exact nature of applicant’s publications, clothing
and the like. However, because the precise nature of
applicant’s goods and services is not an issue in this
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
proceeding, they will not be recited here.
In the first Office Action, the Examining Attorney
Ser. No. 75/503,342

suggested slight modifications to the identification of
goods and services, which applicant agreed to. In
addition, the Examining Attorney stated that “applicant
must insert a disclaimer of PARK INSTITUTE in the
application.” The Examining Attorney provided no
explanation as to why such a disclaimer was required. In
response, applicant offered to disclaim simply the word
INSTITUTE, and this disclaimer was accepted by the
Examining Attorney.
In the second Office Action, the Examining Attorney
argued for the first time that applicant’s mark
INDEPENDENCE PARK INSTITUTE was “primarily geographically
descriptive of applicant’s goods and services,” and thus
was not entitled to registration on the Principal
Register. The Examining Attorney cited Section 2(e)(2)
of the Trademark Act.
When the refusal to register pursuant to Section
2(e)(2) was made final, applicant appealed to this Board.
Applicant and the Examining Attorney filed briefs.
Applicant did not request a hearing.
The facts in this case are not in serious dispute.
With her second Office Action, the Examining Attorney
attached an excerpt from Merriam Webster’s Geographical
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Dictionary (3rd ed. 1997) showing that there exists in
Philadelphia a park known as Independence National
Historical Park. This dictionary does not indicate that
this park is also known as Independence Park. Applicant
does not dispute the fact that it is located in the
greater Philadelphia area, and that it proposes to
provide its goods and services in that area.
The Examining Attorney conducted two NEXIS searches
for stories incorporating the term Independence Park and
either the term Independence Hall or the term
Pennsylvania. The Examining Attorney then made of record
thirteen stories wherein the term Independence Park is
used to refer to a particular park in Philadelphia. The
Examining Attorney argues that, while the official name
of the park is Independence National Historical Park, on
occasion this park is referred to simply as Independence
Park. Applicant is in agreement that the official name
of the park is Independence National Historical Park, and
that on a few occasions this park is referred to as
Independence Park.
Applicant conducted its own NEXIS search for just
the term Independence Park. In so doing, applicant
received the following message from NEXIS: “Your search
has been
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interrupted because it probably will retrieve more than
1,000 documents.” NEXIS then afforded applicant the
opportunity to “retrieve the top 50 documents,” which
applicant did. Applicant then made of record 15 of these
top 50 documents (stories). These stories reveal that
there are numerous parks named Independence Park and that
these parks exist in at least nine additional states,
namely, California, Georgia, Indiana, Kansas, Louisiana,
Massachusetts, North Carolina, Rhode Island and
Wisconsin. Applicant argues that even if one assumes for
the sake of argument that Independence National
Historical Park in Philadelphia is generally known to the
American public, the record fails to demonstrate that
this park’s “nickname” (Independence Park) is generally
known to the American public.
In determining whether a term is “primarily
geographically descriptive” pursuant to Section 2(e)(2)
of the Trademark Act, “the word ‘primarily’ should not be
overlooked, for it is not the intent of the federal
statute to refuse registration of a mark where the
geographic meaning is minor, obscure [or] remote.” 2 J.
McCarthy, McCarthy on Trademarks and Unfair Competition
Section 14:28
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at page 14-44 (4th ed. 2001). For example, our primary
reviewing Court reversed this Board’s refusal to register
VITTEL for soaps, lotions and toiletries despite the fact
that there was a town in France by that name which was
renowned for its health spa and mineral water. In re
Societe Generale des Eaux Minerales de Vittel S.A., 824
F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987). In so doing,
the Court noted that the PTO had simply failed to prove
that Vittel, France was “generally known” to American
consumers. 3 USPQ2d at 1452.
Based upon the record before us, we find that only a
minor number of Americans -- upon hearing the term
Independence Park -- would associate this term with a
specific park in Philadelphia. As previously noted,
after the Examining Attorney conducted NEXIS searches for
Independence Park in conjunction with either Pennsylvania
or Independence Hall, she put in the record but a mere
thirteen stories. In contrast, when applicant conducted
a NEXIS search on Independence Hall per se, applicant was
warned that its search would turn up over 1,000 stories.
Applicant then reviewed the first 50 of these stories,
and found that just these stories alone demonstrated that
these were
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Independence Parks in at least nine additional states.
Had applicant been able to physically review the over
1,000
NEXIS stories, they may well have demonstrated that there
exist Independence Parks in numerous other states. To
state the obvious, the term Independence Park is not
particularly distinctive. It falls in the same category
as such terms as Memorial Park and Veterans Park. In
short, based on this record, we find that there is no one
Independence Park whose geographic significance is any
more than minor.
Decision: The refusal to register is reversed.

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