Eastern Watch Company

Trademark Trial and Appeal Board

Mar 27, 2006

No. 78402643 (T.T.A.B. Mar. 27, 2006)

Mailed:
27 March 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Eastern Watch Company
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Serial No. 78402643
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Edward A. Sokolski, Esq. for Eastern Watch Company.

John T. Lincoski, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney).
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Before Bucher, Rogers and Drost, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

Eastern Watch Company (applicant) seeks to register on
the Principal Register, in standard character form, the mark
SWISSGOLD for goods ultimately identified as “wrist watches,
stop watches, pocket watches, watch bands, watch cases, watch
chains, watch fobs, watch straps, and watches containing a
game function, all wholly or partially of gold; watch
movements, parts for watches, alarm clocks, wall clocks,
clocks not comprised wholly or partially of gold” in Class
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser. No. 78402643
2
14. The intent-to-use application was filed on April 15,
2004.
Citing Sections 2(a) and 2(e)(3) of the Trademark Act,
the examining attorney refused registration on the basis that
applicant’s mark, as applied to applicant’s goods, is
deceptive and primarily geographically deceptively
misdescriptive. When the refusals to register were made
final, applicant appealed to this board.
In order to establish that a mark is deceptive as
applied to the goods for which registration is sought, the
examining attorney must meet a three-part test. First, it
must be shown that the mark misdescribes a characteristic or
quality of the relevant goods. Second, it must be shown that
prospective purchasers are likely to believe that the
misdescription actually describes the relevant goods.
Finally, it must also be shown that the misdescription is
likely to materially affect the decision to purchase the
relevant goods. In re Budge Manufacturing Co. Inc., 857 F.2d
773, 8 USPQ2d 1259, 1261 (Fed. Cir. 1988); In re Berman Bros.
Harlem Furniture Inc., 26 USPQ2d 1514, 1515 (TTAB 1993).
In order to establish that a mark is primarily
geographically deceptively misdescriptive of the relevant
goods, a four-part test must be met. First, it must be shown
Ser. No. 78402643
3
that the primary significance of the mark is a generally
known geographic location. Second, it must be shown that the
goods for which applicant seeks registration do not originate
in the place identified in the mark, in essence, that the
proposed mark misdescribes the geographic origin of the
goods. Third, it must be shown that the consuming public is
likely to believe that the goods originate in the geographic
place identified in the mark. Fourth, it must be
demonstrated that the misrepresentation is a material factor
in the purchaser’s decision to buy the goods. In re Les
Halles de Paris J.V., 334 F.3d 1371, 67 USPQ2d 1539, 1541
(Fed. Cir. 2003). See also, In re California Innovations,
Inc., 329 F.3d 1334, 66 USPQ2d 1853, 1858 (Fed. Cir. 2003).
To be clear, the Federal Circuit in Les Halles and California
Innovations combined factors two and three into one.
We note that the Federal Circuit has explained that as a
result of changes to the Lanham Act, a Section 2(a) refusal
relating to a geographic term and a Section 2(e)(3) refusal
are essentially the same:
As a result of the NAFTA changes to the Lanham Act,
geographic deception is specifically dealt with in
subsection (e)(3), while deception in general continues
to be addressed under subsection (a). Consequently,
this court anticipates that the PTO will usually address
geographically deceptive marks under subsection (e)(3)
of the amended Lanham Act rather than subsection (a).
While there are identical legal standards for deception
Ser. No. 78402643
4
in each section, subsection (e)(3) specifically involves
deception involving geographic marks.

California Innovations, 66 USPQ2d at 1858.1
However, in this case, the examining attorney has also
maintained that, in addition to the term “Swiss” making the
mark geographically deceptive, the mark is also deceptive on
the ground that the term “Gold” when used in association with
non-gold goods will be deceptive. Therefore, we will
consider this refusal separately.
The examining attorney has made of record a significant
amount of evidence establishing the following facts that have
not been contested by the applicant. First, the examining
attorney has shown that the SWISS portion of applicant’s mark
means “of or relating to Switzerland or its people or

1 In addition, TMEP § 1210.05 provides that:
Although the test for determining whether a mark is primarily
geographically deceptively misdescriptive under § 2(e)(3) is
now the same as the test for determining whether a mark is
deceptive under § 2(a), the statutory provisions with respect
to registrability on the Supplemental Register and on the
Principal Register under § 2(f) are different…
[B]ecause the statute expressly prohibits registration of
deceptive marks on the Supplemental Register or on the
Principal Register under § 2(f), the examining attorney will
initially refuse registration of geographically deceptive
marks under both §§ 2(a) and 2(e)(3). If the applicant
alleges use in commerce prior to December 8, 1993 and amends
to the Supplemental Register, or establishes that the proposed
mark acquired distinctiveness under § 2(f) before December 8,
1993, the examining attorney will withdraw the § 2(e)(3)
refusal, but will not withdraw the § 2(a) refusal.
In this case, there is no allegation that applicant has used its
mark in commerce prior to December 8, 1993.
Ser. No. 78402643
5
culture.” The American Heritage Dictionary of the English
Language (3d ed. 1992). Second, the examining attorney has
established that Switzerland is one of the world’s leading
manufacturers of higher quality watches and clocks including
those comprised in part of the precious metal gold. Third,
the examining attorney has established that Switzerland is
world renowned for its high quality watches and clocks
including those made, in part, of gold. Finally, the
examining attorney has established that the word GOLD in
applicant’s mark refers to a precious metal, and that it is
often used in the manufacture of higher quality watches.
Indeed, the evidence establishes that gold is a sought after
component in watches. We would like to reiterate that the
applicant has never taken issue with any of the foregoing
facts established by the examining attorney. Accordingly, we
see no point in reviewing in detail the evidence that the
examining attorney has submitted to establish these facts.
Applicant readily concedes that none of its watches and
clocks (and accessories and parts therefor) are made in
Switzerland. Indeed, at page 2 of its brief, applicant notes
that its advertising materials emphasize that all of its
goods are “made in China.” (original emphasis).
Ser. No. 78402643
6
Based upon the foregoing, we find that applicant’s mark
SWISSGOLD is both deceptive and primarily geographically
deceptively misdescriptive as applied to applicant’s goods.
With regard to the tests for both refusals, the SWISS
portion of applicant’s mark misdescribes all of applicant’s
goods, including those goods not comprised wholly or
partially of gold. The term SWISS is so highly associated
with watches and clocks that its misdescriptiveness is not
eliminated by its combination with the word GOLD.
As for the second part of the test for deceptiveness,
and third part of the test for geographic deceptive
misdescriptiveness, it is clear to us that prospective
purchasers are most certainly likely to believe that the
proposed mark actually describes the relevant goods given the
fact that Switzerland is so extremely well known for watches
and clocks (and accessories and parts therefor), and because
some of these products are made in whole or in part of gold.
Finally, in regard to the materiality prong of the
respective tests, given the high quality of Swiss watches and
clocks, purchasers would be materially influenced into
purchasing clocks and watches bearing the mark SWISSGOLD
because of the SWISS element of the proposed mark, regardless
of the actual composition of the goods.
Ser. No. 78402643
7
With regard to the four-part test for determining
whether applicant’s mark SWISSGOLD is primarily
geographically deceptively misdescriptive of applicant’s
goods, we find that all four of the parts have been met.
Obviously, the term SWISS is not just a generally known term
but instead is an extremely well-known term to United States
consumers signifying, among other things, products produced
in Switzerland. Each of the other factors in this test have
been discussed above.
Applicant’s argument as to why its mark SWISSGOLD is not
primarily geographically deceptively misdescriptive (and
presumably not deceptive) is best summarized at page 2 of
applicant’s brief as follows: “The mark SWISSGOLD suggests
that the goods sold under the mark are of a high quality but
does not infer that the gold in the goods comes from
Switzerland or that the watches sold under the mark are made
in Switzerland.” We find applicant’s reasoning to be without
merit.
Moreover, at page 2 of its brief, applicant argues that
“there has been no attempt, whatsoever, by applicant to lead
potential consumers into believing that [its] watches come
from Switzerland.” In this regard, applicant makes reference
to a flyer that states beneath its mark SWISSGOLD the
Ser. No. 78402643
8
following in small print: “Quality Watches made in China.”
There are three problems with applicant’s “argument.” First,
the issues before this Board are whether the mark SWISSGOLD
per se is deceptive and primarily geographically deceptively
misdescriptive of applicant’s goods. Even assuming for the
sake of argument that such flyers always accompany
applicant’s watches and further assuming that consumers
notice the “fine print,” this is of no legal relevance to the
issue before this Board. Second, in any event, there is
certainly no requirement or guarantee that such a flyer will
forever accompany applicant’s watches and clocks, and there
is certainly no guarantee that consumers will notice the
“fine print” disclaimer. Third, applicant’s intent not to
deceive prospective purchasers does not establish that
applicant’s term is registrable. Certainly, prospective
purchasers will not be aware of this intent. We are
concerned with whether prospective purchasers who encounter
the mark, SWISSGOLD, for watches and similar products not
from Switzerland will be materially influenced to purchase
these products thinking the goods are of Swiss origin.
Therefore, inasmuch as the term “Swiss” is
geographically deceptively misdescriptive and deceptive, we
affirm the examining attorney’s refusals to register.
Ser. No. 78402643
9
Regarding the separate refusal to register on the ground
that the term “Gold” is deceptive, we begin by noting that
many of applicant’s goods are not covered by this refusal.2
Applicant’s “wrist watches, stop watches, pocket watches,
watch bands, watch cases, watch chains, watch fobs, watch
straps, and watches containing a game function” are all
modified by the phrase “all wholly or partially of gold.”
Therefore, the deceptiveness refusal would not apply to these
goods inasmuch as they are properly described by the term
“Gold.” However, even if the mark (SWISSGOLD) were not
deceptive for some of applicant’s goods, it could still be
refused registration if it were deceptive for any of the
remaining goods. Cf. In re Analog Devices, Inc., 6 USPQ2d
1808, 1809 (TTAB 1988).
The question then is whether the term “Gold” is
deceptive when it is used with “watch movements, parts for
watches, alarm clocks, wall clocks, [and] clocks not
comprised wholly or partially of gold.” We begin by
observing that the examining attorney does not cite any case
nor are we aware of any case that holds that there is a

2 Inasmuch as we have already determined that applicant’s mark is
deceptive because it contains the term “Swiss” for watches and
similar products not made in Switzerland, this application would
not be entitled to register regardless of our independent
determination of the effect of the inclusion of the term “Gold.”
Ser. No. 78402643
10
per se rule that the term “Gold” is deceptive for all goods
if they were at one time or could have been made of or coated
with gold.3 Second, we need some evidence to support our
conclusion that “prospective purchasers are likely to believe
that the misdescription actually describes the relevant
goods.” In this case, most of the evidence is directed
toward watches being made of gold. Inasmuch as applicant’s
watches are similarly made of gold, this evidence does not
support the refusal for the non-gold goods. The examining
attorney does refer to an article that reports that “[c]locks
were made of solid gold and were melted down as soon as
finances waned.” Brief at unnumbered page 14. This article
does not demonstrate that consumers today would believe that
the term “gold” used for alarm clocks indicates that the
clocks are made of gold. However, applicant’s goods include
“parts for watches.” It has been clearly established that
watches are sometimes made of gold. It follows, based on
this evidence that watches are made of gold, that parts of
watches, particularly external replacement parts, may
similarly be made of gold. Therefore, inasmuch as
applicant’s parts are not made of gold, the term “gold” would

3 Indeed, the difference in goods likely explains the two
registrations to which applicant refers for the mark SWISS GOLD for
nail and cuticle revitalizer and chocolates.
Ser. No. 78402643
11
deceive potential purchasers who were seeking gold
replacement parts for their gold watches. In addition, we
note that this misdescription of the composition of these
goods not made of gold would not necessarily be apparent from
inspection of the goods because these parts not made of gold
may nonetheless look like they were made of gold.
Moreover, because of the desirability of the identified
products when they are made of gold, the GOLD element of the
proposed mark would also be material to purchasing decisions
of prospective purchasers.
Decision: The refusals to register are affirmed on both
grounds.