Kapalua Land Company, Ltd.

Trademark Trial and Appeal Board

Mar 26, 2013

No. 76670962 (T.T.A.B. Mar. 26, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
March 26, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Kapalua Land Company, Ltd.
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Serial No. 76670962
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Martin E. Hsia of Cades Schutte LLP for Kapalua Land Company, Ltd.

Simon Teng, Trademark Examining Attorney, Law Office 105 (Thomas G. Howell,
Managing Attorney).
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Before Kuhlke, Wolfson, and Hightower, Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Kapalua Land Company, Ltd. has applied to register the mark KAPALUA for
the following services in International Class 35:1
On-line retail store services featuring clothing, headwear,
jewelry, wallets, bags, backpacks, furniture and other
household goods, personal care products, stationery, gifts,
souvenirs, and golf related items; and retail store services
featuring clothing, headwear, footwear, jewelry,
handbags, purses, wallets, bags, backpacks, umbrellas,
furniture and other household goods, personal care
products, stationery, gifts, souvenirs, toys and golf related
items

1 Serial No. 76670962, filed January 3, 2007 pursuant to Section 1(b) of the Trademark Act.
Serial No. 76670962
2

The examining attorney has refused registration on the ground that the mark
is primarily geographically descriptive under Trademark Act Section 2(e)(2), 15
U.S.C. § 1052(e)(2).
Analysis
For a mark to be found primarily geographically descriptive and refused
registration under Section 2(e)(2), it must be shown that (1) the mark’s primary
significance is the name of a place generally known to the public, and (2) the
relevant public would be likely to make a goods (or, as here, services)/place
association, that is, would be likely to believe that the services originate in the place
named in the mark. In re Brouwerij Nacional Balashi NV, 80 USPQ2d 1820, 1821
(TTAB 2006); see also In re Spirits of New Merced LLC, 85 USPQ2d 1614, 1616
(TTAB 2007). In deciding issues of geographical descriptiveness, it is important to
rely on the specific facts in each case. See In re Chalk’s Int’l Airlines Inc., 21
USPQ2d 1637, 1639 (TTAB 1991). The examining attorney has the burden of
establishing a prima facie case that a mark is primarily geographically descriptive.
See In re Roy J. Mankovitz, 90 USPQ2d 1246, 1251 (TTAB 2009).
We first consider whether the record before us establishes that the primary
significance of the term KAPALUA, which is translated in the application as
meaning “two borders” in the Hawaiian language,2 is the name of a generally
known geographic location.

2 Other English translations of “kapalua” in the record include “butterfly” (Reg. No.
2115124, final Office action, January 31, 2012) and “arms embracing the sea” (Response to
Reconsideration Request, May 31, 2012 (“Recon. Response”), at 2).
Serial No. 76670962
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Applicant owns the Kapalua Resort on the northwestern coast of the
Hawaiian island of Maui. Applicant submitted Internet printouts and other
evidence tracing its historical roots to the arrival of a family of missionaries in
Lahaina, Maui in the mid-1830s, including a declaration from vice president
Caroline Belsom stating in part:
3. Based on my review of Applicant’s records and my
personal knowledge, the area that now comprises the
Kapalua Resort includes approximately 1650 acres,
spanning the two ancient “ahupua’a” (generally, large
swaths of land running from the mountains to the sea)
known as “Honokahua” and “Napili.”
4. In the 1950s, however, these same lands were
mostly unpopulated, used mainly for pineapple growing
which was then replacing cattle grazing. At that time,
these lands comprising Honolua Plantation were
accessible only by a road running along the shoreline.
5. The land area that is now the Kapalua Resort was
not called or named “Kapalua” in the 1950s or the 1960s.
6. “Kapalua” was adopted by Applicant’s parent, MLP
[Maui Land & Pineapple Company, Inc.], and its
predecessor-in-interest as the name of the resort it owned
and developed in the 1970s.
7. Since the resort’s commercial development in the
early 1970s, and up through the present day, Applicant
has advertised extensively its upscale real estate
properties, hotel and related services under the “Kapalua”
name and logo.3
Thus, applicant’s evidence shows that its parent company adopted the term
“KAPALUA” as the name for its resort and was the first to apply that name to the
resort’s location; it was not previously used in connection with the area. Although

3 Response to Office Action, January 10, 2012.
Serial No. 76670962
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the record includes a screenshot from one website to the contrary, we do not find
that particular evidence entitled to greater weight than applicant’s sworn
declaration.4
Applicant also submitted a declaration from Tim T. Esaki, its chief financial
officer, which states in part:
3. Since the resort’s commercial development in the
early 1970s, and up through the present day, Applicant
has advertised extensively its upscale real estate
properties, hotel services, and golf services under the
“KAPALUA” mark.
4. From 1995 through 2011 alone, Applicant has
spent over $21,000,000 dollars in advertising and
marketing expenses.5
The declaration also states that applicant “actively monitors and polices its
trademark rights in the mark ‘KAPALUA,’” spending more than $650,000 policing
and enforcing those rights from 2005 through 2011.6 In addition, Mr. Esaki states
in his declaration that all third-party commercial entities operating at the resort
are members of the Kapalua Resort Association, and that they – along with
residential owners who reside there – are subject to covenants and land use

4 The website, www.hawaiistateinfo.com, states in part: “The first native Hawaiians came
into Kapalua by sea. Seeing the curve formed by [sic] long coast as if by a half closed
embrace, they called the land Kapalua.” Recon. Response at 17. This source of this
statement is not identified, and ownership of the Hawaii State Info site is unclear; the page
states that it is “A Real Estate Webmasters Design,” id. at 19, suggesting that this is a
promotional site of some sort. As applicant notes: “Even if this unattributed assertion were
true, the time frame is vague and evidently occurred long before Hawaii ever became part
of the United States, as the Kingdom of Hawaii did not become a U.S. Territory until 1898,
and Hawaii did not become the 50th State until 1959.” Reply Brief at 6.
5 Esaki Declaration, Request for Reconsideration, April 30, 2012 (“Recon. Request.”).
6 Id. at ¶ 5.
Serial No. 76670962
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restrictions enforceable by applicant.7 Applicant submitted screenshots from its
website relating to services provided at the Kapalua Resort, including golf, hotel,
restaurant, and real estate services for condominiums, homes, and homesites.8
In sum, applicant argues, and supports with probative evidence, that the
term KAPALUA had no geographical significance before applicant chose it for the
name of its resort; that it has extensively promoted its upscale real estate
properties, hotel services, and golf services under the KAPALUA mark; and that it
has maintained quality control over use of that mark by others.
In his appeal brief, the examining attorney asserts that “Kapalua is a large
undefined area in west Maui not 100% fully owned, maintained and controlled by
the applicant.”9 He further asserts that the record evidence “does not show that
applicant has complete exclusive control over the entire area of Kapalua,” and that
Kapalua today “encompasses an area not exclusively owned by the applicant.”10 In
support, the examining attorney cites to two maps: a page from
www.mauimapp.com printed on August 25, 2001 – more than eleven years earlier –
and an undated page with a Travel Channel logo titled “Kapalua, Hawaii”
referencing some services and attractions the record establishes to be associated
with applicant (including The Ritz Carlton, Kapalua; The Plantation House

7 Id. at ¶¶ 10-17. Applicant submitted with the declaration a copy of a “Declaration of
Covenants, Conditions, and Restrictions” applicable to the Plantation Course golf course at
the Kapalua resort and all related properties, including a club house and the Plantation
House restaurant.
8 Recon. Request at 66-69 (www.kapalua.com).
9 Examiner’s Brief at unnumbered p. 9.
10 Id.
Serial No. 76670962
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restaurant; and The Plantation [Golf] Course) and others that are not or may not be
associated with applicant (e.g., Haleakala National Park).11 Applicant correctly
states that the examining attorney “did not argue during the prior prosecution of
the Application that Applicant lacked exclusive ownership and/or control of an
allegedly larger land area referred to by others as ‘Kapalua,’” and vigorously
disputes that the record supports this contention.12
We fully recognize and appreciate the observation of our primary reviewing
court that “the PTO is an agency of limited resources.” In re Pacer Tech., 338 F.3d
1348, 67 USPQ2d 1629, 1632 (Fed. Cir. 2003); see also In re Loew’s Theatres, Inc.,
769 F.2d 764, 226 USPQ 865, 868 (Fed. Cir. 1985) (“The practicalities of the limited
resources available to the PTO are routinely taken into account in reviewing its
administrative action.”). Nonetheless, we cannot agree with the examining attorney
that the evidence of record in this case establishes the existence of a geographic
area outside of applicant’s ownership or control called “Kapalua,” either in the past
or at the present time. We find that the evidence before us, considered as a whole,
supports applicant’s contention that “Kapalua” does not name an area other than
that comprised by its resort. Rather, from its inception the term KAPALUA
identified a large land development, the resort, in a particular location.
This conclusion defines the scope of our task, but does not complete it. As the
Board wrote in In re Pebble Beach Co., 19 USPQ2d 1687, 1688 (TTAB 1991):

11 Final Office action, January 31, 2012, at 35, 44.
12 Reply Brief at 8.
Serial No. 76670962
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The mere fact that a term may be the name of a place that
has a physical location does not necessarily make that
term primarily geographically descriptive under Section
2(e)(2). If that were so, the name of literally every retail
store or restaurant would be primarily geographically
descriptive, since the public would associate the name
with the physical place where the services were rendered
or the goods sold. The Patent and Trademark Office and
the courts have implicitly and explicitly recognized that
terms which denote areas which have a physical location
can also be registered and function as trademarks.
We therefore must determine whether the primary significance of the mark
KAPALUA is to designate applicant’s services or the geographic location where its
resort development is sited.
Applicant argues that KAPALUA functions primarily as an indicator of the
source of its services. The examining attorney contends that KAPALUA “is
perceived as a genuine geographic name and not exclusively as a badge of origin” for
applicant.13
We do not view the record as establishing a primary geographic significance
for the term KAPALUA; rather, we find geographic significance subsidiary to the
function of that word as a service mark. Although the examining attorney has
submitted numerous third-party Internet references to “Kapalua,”14 the applicant
has rebutted that evidence by demonstrating that most such references either
clearly pertain to the resort and other services rendered under its mark (by
applicant or authorized third parties) or are consistent with that interpretation.

13 Examiner’s Brief at 8.
14 See generally Office action, November 14, 2011; final Office action, January 30, 2012;
Recon. Response.
Serial No. 76670962
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For example, the “Hyundai Tournament of Champions in Kapalua, Hawaii” takes
place at one of the golf courses at applicant’s resort,15 while “Kapalua, Maui –
Celebration of the Arts” apparently denominates an event offered by the resort,16
and the Kapalua West Maui Airport in Lahaina, Hawaii may be so named in part to
identify a travel resource for consumers of applicant’s services.17 While the record
includes tourism-related sites indicating that Kapalua Bay, also called Kapalua
Beach, is open to the public (as are all Hawaiian beaches) the beach was also named
and is owned by applicant as part of the greater resort.18
One piece of evidence submitted by the examining attorney merits particular
discussion. An article on “Kapalua, Hawaii” from Wikipedia.com states, and
Census records confirm,19 that “Kapalua is a census-designated place (CDP) in Maui
County, Hawai’i, United States.” The fact that a location is a CDP may weigh in
support of a finding that a term is primarily geographically descriptive. However,
we find its probative value diminished in this record. First, Hawaii is unique in
that it is the only state with no incorporated places recognized by the U.S. Census

15 Final Office action, January 31, 2012, at 59, 95-97.
16 Id. at 55, 76.
17 Final Office action, January 31, 2012, at 99. The record does not disclose when the
airport opened or why it received this designation. However, the airport’s address is
Lahaina, HI, and its website states that “Kapalua Airport is located on the west side of the
Island of Maui a short distance from the resort destinations of Kaanapali and Lahaina.” Id.
18 E.g., id. at 36, 44, 47, 64; Office action, November 14, 2011, at 3; Recon. Response at 5.
19 The Board may take judicial notice of census data. In re Tokutake Industry Co., 87
USPQ2d 1697, 1700 n.1 (TTAB 2008).
Serial No. 76670962
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Bureau; therefore, “[a]ll places shown in the data products for Hawaii are CDPs.”20
Second, after referencing its CDP status, the Wikipedia entry discusses the Kapalua
Resort in several places; for example, the second sentence of the article states that:
“A resort development by the Maui Land & Pineapple Company extends inland
from Kapalua Bay and Honolua Bay,” while another sentence reads as follows:
“The Hawaiian name for this area was Honokahua.”21 We do not find the census
designation dispositive on these facts.22
In rare cases, the Board has found that a designation coined and promoted as
a mark but incidentally designating a particular location may not be primarily a
geographic descriptor. The leading such case is Pebble Beach, in which the Board
held that the term 17 MILE DRIVE – which applicant coined to designate a location
it owned and to which it controlled access – functioned primarily as a mark.23 As
the Board explained:
Commentators have ascribed two basic reasons for the
prohibition against the registration of primarily
geographically descriptive terms. One is that such a term
would be perceived by the public not as an indication of

20 U.S. Census Bureau website, www.census.gov/geo/www/cob/pl_metadata.html,
retrieved March 15, 2013. The 2010 population was 353
(www.census.gov/popfinder/?fl=1529725, retrieved March 15, 2013).
21 Office action, November 14, 2011, at 2.
22 We further note that the Wikipedia article states that the Kapalua CDP has a total area
of 2.3 square miles, while the 1650 acres of applicant’s resort converts to nearly 2.6 square
miles, suggesting that the two are roughly coextensive. (A square mile is equal to 640
acres. WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY (1993) (table, definition of
“measure”). The Board may take judicial notice of dictionary evidence. In re Red Bull
GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).)
23 See also Horseshoe Bay Resort Sales Co. v. Lake Lyndon B. Johnson Imp. Corp., 53
S.W.3d 799, 808-09 (Tex. App. 2001) (finding HORSESHOE BAY not geographically
descriptive).
Serial No. 76670962
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source, i.e., a trademark, but as an indication of the
geographic place from which the product comes. The
second reason is that all manufacturers in a particular
geographic place have the right to use the geographic
name to indicate where their products are made.
In re Pebble Beach Co., 19 USPQ2d at 1688. Here, as in Pebble Beach, neither
policy applies. First, the greater weight of the evidence shows that KAPALUA did
not signify a geographic place before applicant adopted the term to designate the
origin of its services and it continues to serve the function of designating source.
Second, there is no record evidence of any manufacturer or other commercial
enterprise in a place named “Kapalua” outside of applicant’s ownership or control.
We hasten to add that neither the fact that an applicant coins a name for a
geographic area, nor that it owns and controls access to or use of that property,
changes the nature of a term that is primarily geographically descriptive. Cf.
Grand Canyon West Ranch, LLC v. Hualapai Tribe, 88 USPQ2d 1501, 1506 (TTAB
2008) (dismissing descriptiveness claim only on showing of secondary meaning of
mark GRAND CANYON WEST and stating that “the fact that applicant uses
GRAND CANYON WEST to identify a property which it owns and controls does
not, by itself, remove it from the category of those terms which are ‘primarily
geographically descriptive’ under Section 2(e)(2)”). Few applicants have succeeded
in establishing a primary connotation of a place name alternative to its geographic
significance. But see In re Cotter & Co., 228 USPQ 202, 205 (TTAB 1985) (finding
primary significance of “West Point” to be U.S. Military Academy rather than town
in New York where academy is located). We simply emphasize once again that each
Section 2(e)(2) refusal must be analyzed on its own specific facts.
Serial No. 76670962
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Having found that the examining attorney has not satisfied the Office’s
burden to demonstrate that the primary significance of KAPULUA is a generally
known geographic location, we need not reach the second prong of the geographic
descriptiveness test by determining whether the relevant public would be likely to
make a services/place association.
In closing, we note that applicant and the examining attorney have made
arguments concerning the fact that applicant owns several other registrations
consisting of or incorporating the term KAPALUA, on both the Supplemental
Register and the Principal Register, for goods and services other than those
identified in the application; some of these registrations issued on a showing of
acquired distinctiveness pursuant to Trademark Act Section 2(f), 15 U.S.C.
§ 1052(f), and some did not. These registrations are not conclusive on the question
of geographic descriptiveness. Each case must stand on its own merits and the
Board must decide each case on its own facts and record, In re Nett Designs Inc., 236
F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001), resolving any doubts about our
conclusion in applicant’s favor. In re Int’l Taste Inc., 53 USPQ2d 1604, 1606 (TTAB
2000); In re John Harvey & Sons Ltd., 32 USPQ 2d 1451, 1455 (TTAB 1993). When
the mark is published, any person who has a legitimate interest in use of the name
KAPALUA may file an opposition. In re Merrill Lynch, Pierce, Fenner, & Smith,
Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1144 (Fed. Cir. 1987); In re the Stroh Brewery
Co., 34 USPQ2d 1796, 1797 (TTAB 1994) (“When doubts exist as to whether a term
is descriptive as applied to the goods or services for which registration is sought, it
Serial No. 76670962
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is the practice of this Board to resolve doubts in favor of the applicant and pass the
mark to publication with the knowledge that a competitor of applicant can come
forth and initiate an opposition proceeding in which a more complete record can be
established.”) (citing In re Gourmet Bakers, Inc., 173 USPQ 565 (TTAB 1972)).
Decision: The examining attorney’s refusal to register applicant’s mark
under Section 2(e)(2) of the Trademark Act is reversed.