Joseph W. Cotchett

Trademark Trial and Appeal Board

Aug 5, 2005

No. 78208591 (T.T.A.B. Aug. 5, 2005)

Mailed:
August 5, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Joseph W. Cotchett
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Serial No. 78208591
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Paul W. Reidl, Esq. for Joseph W. Cotchett.

S.E. Hickey, Trademark Examining Attorney, Law Office 112
(Janice O’Lear, Managing Attorney).
_______

Before Hohein, Drost and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

On January 29, 2003, Joseph W. Cotchett (applicant)
filed an intent-to-use application to register HALF MOON
BAY on the Principal Register for “wines.”
The examining attorney refused registration on the
ground that the mark is primarily geographically
descriptive of the goods under Section 2(e)(2) of the
Trademark Act, 15 U.S.C. § 1052(e)(2). Applicant
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 78208591
2
responded; the examining attorney issued a final refusal;
and applicant appealed.
The sole issue on appeal is whether HALF MOON BAY is
primarily geographically descriptive of wines.
To determine whether HALF MOON BAY is primarily
geographically descriptive of wines we must determine: (1)
whether the primary significance of the mark is as the name
of a place which is generally known; and (2) whether the
wine-purchasing public would associate the goods of
applicant with the place named, that is, whether the public
would believe that the goods come from the place named. In
re Societe Generale des Eaux Minerales de Vittel S.A., 824
F.2d 957, 3 USPQ2d 1450, 1452 (Fed. Cir. 1987); In re JT
Tobacconists, 59 USPQ2d 1080, 1081 (TTAB 2001); In re
California Pizza Kitchen Inc., 10 USPQ2d 1704, 1705 (TTAB
1988). The two questions are bound together, that is,
there can be no goods-place association if the place named
is so obscure or remote that purchasers for the product at
issue would not recognize it as a place. Vittel, 3 USPQ2d
at 1452.
In a concurring opinion in In re Nantucket, Inc., 677
F.2d 95, 213 USPQ 889, 895 (CCPA 1982), Judge Nies
discussed the common law origins of the Trademark Act
treatment of geographic terms:
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Basic to consideration of the registrability and
protectability of geographic terms as a trademark is
the routine commercial practice of merchants, whether
they are growers, manufacturers, distributors, or
local retailers in placing the name of their location
on their goods or using the name in their trade name.
Because the public would be aware of common trade
practice, the common law originally deemed all use of
geographic names wholly informational and
unprotectible. It was believed such names could not
function, and in any event, should not be recognized
as the identification of a single source. Thus we
must start with the concept that a geographic name of
a place of business is a descriptive term when used on
the goods of that business. There is a public
goods/place association, in effect, presumed.

However, as with other terms which are descriptive
when first used, it came to be recognized that through
substantially exclusive and extensive use, a merchant
might develop a protectible good will in such a
geographically descriptive name upon proof that the
name ceased being informational to the public and came
to indicate a source of goods.

Applicant observes that, in fact, “The wine industry
commonly uses geographic place names as trademarks.”
Applicant’s Brief at 9. And, in particular, applicant
indicates further that, “. . . applicant’s winery is
located in Half Moon Bay, California.” Id. at 3.
With the final refusal, the examining attorney
provided evidence relevant to both the primary geographic
significance of HALF MOON BAY and the association of wines
with that place. The relevant evidence comes from the
electronic version of the Columbia Gazetteer of North
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America (2000) and Merriam-Webster’s Geographical
Dictionary (3rd ed. 1988).
The Gazetteer includes an entry for Half Moon Bay as
follows:
Half Moon Bay, city (1990 pop. 8,886) San Mateo co., W
Calif, suburb 23 mi/37 km S of downtown San Francisco,
on picturesque Half Moon Bay, of Pacific Ocean, at
mouth of Pilarcitos Creek; 37°28’N 122°27’W. sheltered
on N by Pillar Point. Artichokes, brussel sprouts;
grain; Christmas trees, ornamentals, flowers, nursery
prods.; fishing; mfg. (musical instruments, light
mfg.). Annual Pumpkin Festival. Half Moon Bay Airport
to NW; Santa Cruz Mts. and San Francisco Fish and Game
Reserve to NE; part of Half Moon Bay State Beach is to
N.

The geographical dictionary includes only one entry
for “Half Moon Bay” as follows: “Half Moon Bay, City, San
Mateo co., W California, on Half Moon Bay (inlet); pop.
(1990c) 8886.”
The examining attorney’s evidence indicates that there
is a city named Half Moon Bay located on a bay of the same
name about 20 miles south of San Francisco. The city is of
significant size with a 1990 population of nearly 9,000.
The evidence indicates further that there is agricultural,
fishing and manufacturing activity in the city and area
known as Half Moon Bay. There is also a local airport
called Half Moon Bay Airport.
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Applicant adds some additional information by
representing that, “The purchasing public, inasmuch as it
is familiar with Half Moon Bay, California, recognizes this
place as a seaside resort and weekend getaway.”
Applicant’s Brief at 5. Based on applicant’s
representation, we conclude that Half Moon Bay, California
is also a destination for tourists and vacationers.
When viewed as a whole, the evidence leads to the
conclusion that HALF MOON BAY refers to a known
geographical location, namely, Half Moon Bay, California,
which is neither obscure nor remote. This is also the
place where applicant is located.
We also conclude that there is an association between
Half Moon Bay, California and wine. In concluding so we
first note that, as a general proposition, a goods-place
association can be presumed when, as here, the goods of
applicant, in fact, come from the place named. In re MCO
Properties, Inc., 38 USPQ2d 1154, 1155 (TTAB 1995); In re
Cambridge Digital Systems, 1 USPQ2d 1659, 1661 (TTAB 1986);
In re Handler Fenton Westerns, Inc., 214 USPQ 848, 849
(TTAB 1982). In this case, we need not rely on that
presumption alone because Half Moon Bay, California is a
place of significant size where both agricultural and
manufacturing activity occurs. Thus, Half Moon Bay,
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California is not a place “devoid of commercial activity.”
In re Cambridge Digital Systems, 1 USPQ2d at 1662. In
fact, Half Moon Bay, California is the locus of activities,
agricultural and manufacturing, which are entirely
compatible with the production of wine. In re Cambridge
Digital Systems, 1 USPQ2d at 1662 (Goods-place association
found between Cambridge, Massachusetts and computers based
on evidence that Cambridge is a “manufacturing and
commercial center for electrical machinery and scientific
instruments.”). And, applicant is, in fact, producing wine
in Half Moon Bay, California.
All in all, the evidence points to the conclusion that
HALF MOON BAY refers to a known geographical location which
is neither obscure nor remote, and an association of that
location with wine.
Applicant argues that HALF MOON BAY has a suggestive,
nongeographical meaning, and therefore, is not primarily
geographically descriptive. Applicant’s Brief at 3.
However, there is simply no basis to conclude, as applicant
urges, that the mark will conjure up in the minds of wine
drinkers “the image of enjoying Applicant’s product in the
moonlight by the water” rather than a place. Id. If we
were to adopt applicant’s view, we would be compelled to
find virtually any place name derived from suggestive
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terminology, such as Clearwater or Palm Springs, not
primarily geographically descriptive. This argument is
merely another way of asserting that a place name is
obscure, and therefore, would not be perceived as a place
name. Furthermore, there is no evidence here to establish
an alternative, overriding meaning which the public would
associate with HALF MOON BAY.
This case is also not at all like other cases where
the Board has found that a suggestive meaning, growing out
a strong association of the place named with an industry or
institution, overrides the geographical significance when
the mark is applied to certain goods or services. In re
International Taste Inc., 53 USPQ2d 1604, 1605 (TTAB 2000);
In re Municipal Capital Markets Corp., 51 USPQ2d 1369, 1371
(TTAB 1999); In re Cotter & Co., 228 USPQ 202, 205 (TTAB
1985). Simply put, HALF MOON BAY is not Hollywood,
Cooperstown or West Point. We have concluded that, on this
record, HALF MOON BAY is neither remote nor obscure and
that there is no established, alternative primary meaning
for HALF MOON BAY in the public mind.
We also reject the suggestion that the association of
the place primarily with tourism somehow negates the
primary geographical meaning as applied to wines. In re
Nantucket Allserve Inc., 28 USPQ2d 1144, 1145 (TTAB 1993).
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Applicant also argues that there are other places
known as HALF MOON BAY, and therefore, the mark is not
primarily geographically descriptive of Half Moon Bay,
California. In both the main brief and reply brief
applicant notes the existence of “other” Half Moon Bays in
Australia, New Zealand, St. Kitts and Antigua.1 The only
support applicant provides to demonstrate the existence of
these places are web addresses. In providing the web
addresses applicant apparently presumed that the content of
the associated sites would become of record. The examining
attorney objected to the form of this evidence. In his
reply brief applicant continues to urge acceptance of this
“evidence” and argues further that the Board can
independently verify applicant’s assertions by consulting
an atlas. However, applicant neither identifies nor
provides pages from any atlas for this purpose.
The identification of web addresses alone is
insufficient to make content provided on those web sites of
record. The content of web sites changes constantly, in
many instances minute by minute. Web addresses also change

1 In his first office action response applicant referred to
additional potential Half Moon Bays, including a bay on a lake in
Grand Teton National Park, a swamp in South Carolina and a bay in
Jamaica, also without providing any supporting documentation. It
is unclear whether applicant intended to maintain these
references as part of its argument, but we find these no more
persuasive than those applicant cites in its brief.
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constantly. Indeed, entire web sites can disappear without
notice, and likewise web addresses can be rendered inactive
without notice. Consequently, the provision of a mere web
address in an attempt to make the content of the associated
site of record does not afford any of the certainty or
permanence required to establish a record. In re
Planalytics Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
Therefore, we have not considered any content from the web
sites which may be associated with the web addresses to
which applicant refers in its papers. The record on appeal
is limited to materials properly made of record either by
applicant or the examining attorney prior to appeal. 37
C.F.R. § 2.142(d). If an applicant wishes to rely on
content from a web site, the applicant must print out the
relevant content and submit it for the record prior to
appeal with appropriate information as to the source.
With regard to applicant’s suggestion that the Board
take judicial notice of an unidentified atlas, we note that
applicant could have made material from an atlas of record
but did not do so. The Board may, in its discretion, take
judicial notice of certain sources. In this case, we
decline to do so.
Turning to the merits of applicant’s arguments that
there are other places known as HALF MOON BAY, the only
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basis we have for finding that such places exist is
applicant’s assertion. Applicant’s assertion is
insufficient for this purpose. Even if applicant had
supported this assertion with evidence, the existence of
these other apparently obscure places outside the United
States known as Half Moon Bay would be insufficient to
refute the conclusion that the primary geographic
significance of HALF MOON BAY is the place where applicant
is located. The mere existence of other places of the same
name is generally insufficient to negate a finding that a
place name is primarily geographically descriptive. In re
Loew’s Theatres Inc., 769 F.2d 764, 226 USPQ 865, 868 (Fed.
Cir. 1985); In re Cambridge Digital Systems, 1 USPQ2d at
1662.
Lastly, Applicant argues that the issuance of
registrations for two marks, LIVINGSTON CELLARS and
WOODBRIDGE, for wines supports registration in this case.
Applicant argues that each of these marks identifies the
place in California where the respective wines are
produced. We reject this argument as well.
First we turn to the form of this evidence. In his
brief the examining attorney objected to applicant’s
submission of the full electronic records regarding these
registrations with applicant’s brief. Applicant had
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referred to the registrations in his response to the first
office action. The examining attorney objected to the
references in the final action indicating that the
references were insufficient to make the registrations of
record. Accordingly, we will not consider either the
information applicant provided in the office action
response or the full electronic copies of the registration
information applicant provided with its brief. The
information applicant provided with its response was
insufficient to make the registrations of record and
applicant’s submission of the full records with its brief
was untimely. 37 C.F.R. § 2.142(d). TBMP § 1208.02 (2d
ed. rev. 2004).
Also, applicant provided no evidence to support its
contention that Livingston and Woodbridge are place names.
The examining attorney provided the relevant page from the
geographical dictionary indicating that there is no entry
for Woodbridge, California. More importantly, even if
applicant had provided appropriate documents at the
appropriate time to support this argument, we must
determine whether a particular place name is “primarily
geographically descriptive” according to the unique facts
of each case. Neither the Board nor the examining attorney
is bound by the prior actions of the Office in cases which
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involve different facts. In re Nett Designs, Inc., 236
F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001). One could just
as readily identify registrations for geographical place
names for wine issued on the basis of acquired
distinctiveness, consistent with the common law practice
now codified in the Trademark Act which Judge Nies
described. Nantucket, 213 USPQ at 895.
In conclusion, we have considered all of the evidence
which is properly of record in this case and determined
that HALF MOON BAY is primarily geographically descriptive
for wines. Half Moon Bay, California is a place which is
neither obscure nor remote, but rather a place which would
be generally known to the purchasers of wine. And HALF
MOON BAY is also a place which is associated with wines.
Decision: The refusal to register the mark because it
is primarily geographically descriptive of the goods is
affirmed.