Expressions on Ice

Trademark Trial and Appeal Board

Aug 18, 1999

No. 75161125 (T.T.A.B. Aug. 18, 1999)

Paper No. 10
RLS/cj
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 28 ,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Expressions on Ice
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Serial No. 75/161,125
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Theodore J. Lesiak of Oberholtzer Filous & Lesiak for
Expressions on Ice.
Angela M. Micheli, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney)
_______
Before Simms, Hanak and Chapman, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Expressions on Ice (applicant), an Ohio partnership,
has appealed from the final refusal of the Trademark
Examining Attorney to register the mark shown below
Ser. No. 75/161,125
2
for pants, shirts, tops, hats, headwear, gloves, sweaters
and jackets.1 The Examining Attorney has refused
registration under Section 2(e)(2) of the Act, 15 USC
§1052(e)(2), arguing that applicant’s mark is primarily
geographically descriptive of applicant’s goods. Applicant
and the Examining Attorney have submitted briefs but no
oral hearing was requested.
We affirm.
A mark is primarily geographically descriptive under
Section 2(e)(2) if the primary significance of the mark
sought to be registered is the name of a place known to the
public and if the public would make a goods/place
association, or, in other words, believe that the goods for
which the mark is sought to be registered originate in the
place named in the mark. See In re U.S. Cargo Inc., 49
USPQ2d 1702, 1703 (TTAB 1998), and In re California Pizza
Kitchen Inc., 10 USPQ2d 1704, 1705 (TTAB 1988), and cases
cited therein, including In re Societe Generale des Eaux
Minerales de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450,
1452 (Fed. Cir. 1987). Also, if the geographical
significance of a term is its primary significance and the

1 Application Serial No. 75/161,125, filed September 5, 1996,
based upon allegations of use and use in commerce since November
10, 1993. The Examining Attorney has withdrawn refusals under
Sections 2(d) and 2(a) of the Act.
Ser. No. 75/161,125
3
geographical place named in the mark is neither obscure nor
remote, a public association of the goods with the place
may generally be presumed from the fact that applicant’s
goods come from the geographic place named in the mark.
See In re Handler Fenton Westerns, Inc., 214 USPQ 848, 850
(TTAB 1982).
Here, the Examining Attorney argues that the letters
“USA” in applicant’s mark are a well-known abbreviation for
the United States of America and that the primary
significance of this part of applicant’s mark is the name
of a place known to the public. Also, the Examining
Attorney argues that the public will make a goods/place
association between applicant’s clothing and the place
named in the mark. Because applicant’s goods are
assertedly partially made in the United States and because
applicant is located here and intends to sell its goods
here, applicant’s asserted mark is primarily geographically
descriptive, according to the Examining Attorney. Further,
the Examining Attorney notes that the addition of generic
or highly descriptive matter to a geographic term will not
Ser. No. 75/161,125
4
avoid a determination of primary geographic
descriptiveness.2
Applicant, on the other hand, argues that the “USA”
part of its mark does not merely denote the origin of
products but rather implies a certain quality or style of
applicant’s clothing. More particularly, applicant argues
that its asserted mark as a whole denotes “a certain
beauty, style and perseverance to excellence Applicant
seeks to associate with its brand of clothing.” Brief, 3.
Applicant has relied upon a 1938 federal District Court
decision holding that the term “ALL-AMERICAN” is suggestive
of the geographic origin of handkerchiefs.
Upon careful consideration of the arguments of the
attorneys, we agree with the Examining Attorney that
applicant’s asserted mark is primarily geographically
descriptive of its goods, for the reasons asserted by the
Examining Attorney. There is no question that the primary
significance of the “USA” portion is the abbreviation for
this country and that the public would make a goods/place
association between applicant’s clothing and the place
named in the mark. While we could find no evidence in this

2 The Examining Attorney cites the cases of In re Cambridge
Digital Systems, 1 USPQ2d 1659 (TTAB 1986) and In re BankAmerica
Corporation, 231 USPQ 873 (TTAB 1986).
Ser. No. 75/161,125
5
record concerning the place of manufacture of applicant’s
clothing, applicant has not disputed the Examining
Attorney’s assertion that applicant’s clothing is made in
this country, at least in part. Further, the inclusion of
the generic expression “Figure Skating” in applicant’s mark
for clothing that may be worn for this sport does not
detract from the primary geographic significance of the
asserted mark.
Decision: The refusal of registration is affirmed.
R. L. Simms
E. W. Hanak
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial and
Appeal Board