Joseph W. Cotchett

Trademark Trial and Appeal Board

Aug 5, 2005

No. 78208878 (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
________

Serial No. 78208878
_______

Paul W. Reidl, Esq. for Joseph W. Cotchett.

Howard Smiga, Trademark Examining Attorney, Law Office 102
(Thomas V. Shaw, Managing Attorney).1
_______

Before Hohein, Drost and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

On January 30, 2003, Joseph W. Cotchett (applicant)
filed an intent-to-use application to register HALF MOON
BAY WINERY and design, as shown below, on the Principal
Register for “wines.”

1 Examining Attorney Erica D.B. Glembocki acted on the
application initially, and Examining Attorney Smiga took over the
application prior to this appeal.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 78208878
2

Applicant has disclaimed “winery.”

The examining attorney required a disclaimer of HALF
MOON BAY under Section 6(a) of the Trademark Act, 15 U.S.C.
§ 1056(a), on the ground that it is primarily
geographically descriptive of the goods under Section
2(e)(2) of the Trademark Act, 15 U.S.C. § 1052(e)(2).
Applicant declined to do so; the examining attorney
repeated the requirement; and applicant appealed.
The sole issue on appeal is whether the disclaimer
requirement is proper, that 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 the
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
Ser No. 78208878
3
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:
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
Ser No. 78208878
4
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 his January 18, 2005 office action, 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 evidence comes
from numerous web sites including the site of the Half Moon
Bay Coastside Chamber of Commerce and Visitors Bureau at
www.halfmoonbaychamber.org, the site of the San Francisco
Chamber of Commerce at www.sfchamber.com and the site of
the City of Half Moon Bay at www.half-moon-bay.ca.us. All
sites emphasize that both Half Moon Bay and the City of
Half Moon Bay offer a wide range of amenities and
activities for visitors, as well as a wide range of goods
and services. Applicant acknowledges 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.
Ser No. 78208878
5
The San Francisco Chamber of Commerce web site
indicates that Half Moon Bay is 30 miles south of San
Francisco, and it specifically refers to Half Moon Bay’s
two wineries while a related site discusses applicant’s
winery, in particular. The discussion notes applicant’s
association with a major local event, the Pumpkin Festival,
and highlights the special wines applicant offers, noting
that the wines are “named after famous locations or
characteristics of the Coastside.” The sites also note the
availability of golf courses, nature preserves and beaches
at Half Moon Bay; they tout Half Moon Bay as “the hottest
surfing location in the world”; the San Francisco Chamber
of Commerce site also notes the availability of numerous
hotels, including a five-star Ritz Carlton® hotel at Half
Moon Bay. The City of Half Moon Bay site reports a 2000
population for the city of 11,842. The site refers to the
Half Moon Bay public-use airport and Half Moon Bay State
Beach. In view of this and other evidence, it is obvious
that Half Moon Bay is a place of significant size located
on the Pacific coast near San Francisco, that it is a
significant center for tourism in its own right, and that
it is home to two wineries.
All in all, the evidence points to the conclusion that
HALF MOON BAY refers to a known geographical location which
Ser No. 78208878
6
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
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);
Ser No. 78208878
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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).
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.2 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

2 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.
Ser No. 78208878
8
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
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
Ser No. 78208878
9
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
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.
Ser No. 78208878
10
Cir. 1985); In re Cambridge Digital Systems, 1 USPQ2d 1659,
1662 (TTAB 1986).
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.3 We reject this argument as well. Applicant
provided no evidence to support its contention that
Livingston and Woodbridge are place names. More
importantly, 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 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

3 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 referred to
the registrations in the response to the first office action.
The examining attorney did not object to the references in the
next action, but only in his appeal brief. Accordingly, we have
considered the information applicant provided in the office
action, but not the full electronic copies applicant provided
with its brief. This submission was untimely. 37 C.F.R.
§ 2.142(d). TBMP § 1208.02 (2d ed. rev. 2004.

Ser No. 78208878
11
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 requirement for a disclaimer of HALF
MOON BAY is affirmed. However, if applicant submits the
required disclaimer within thirty days of this decision,
the decision will be set aside and the application will be
published for opposition. See 37 C.F.R. § 2.142(g).