Los Angeles Tourism & Convention Board

Trademark Trial and Appeal Board

Sep 30, 2017

No. 86631108 (T.T.A.B. Sep. 30, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: September 30, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Los Angeles Tourism & Convention Board
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Serial No. 86631108
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Matthew S. Slevin of Cobalt LLP,
for Los Angeles Tourism & Convention Board.
Leslee Friedman, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
_____

Before Kuhlke, Cataldo and Taylor,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:
Los Angeles Tourism & Convention Board (“Applicant”) seeks registration on the
Principal Register of the wording LOS ANGELES (in the stylized font shown below)
for:
Convention and visitors bureau services, namely,
promoting business and tourism in the Los Angeles area;
Convention and visitors bureau services, namely,
promoting business, tourism and the holding of
conventions in the Los Angeles area; Convention and
visitors bureau services, namely, promoting tourism,
business and conventions in and around the Los Angeles
area; Promoting recreation and tourism in Los Angeles;
Serial No. 86631108
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Promoting tourism in Los Angeles area in International
Class 35.1

LOS ANGELES was disclaimed voluntarily when the application was filed. The
application also includes a claim of ownership of a prior Supplemental Register
registration, Registration No. 4531148, for the stylized mark for “Tote
bags” in International Class 18, and “Hats; T-shirts” in International Class 25.2
In the first Office Action issued August 28, 2015, the Trademark Examining
Attorney (“Examining Attorney”) refused registration of Applicant’s mark under
Trademark Act Section 2(e)(2), 15 U.S.C. § 1052(e)(2), on the ground that the applied-
for mark is primarily geographically descriptive of the origin of Applicant’s services,
and did not accept Applicant’s voluntary disclaimer on the basis that an entire mark
may not be disclaimed.
Applicant responded to the refusals, arguing that:
(1) Applicant’s mark has acquired distinctiveness and
secondary meaning as a result of its existing registrations
for legally equivalent marks;3

1 Application Serial No. 86631108 was filed on May 15, 2015, based upon Applicant’s claim
of first use anywhere and use in commerce since at least as early as June 12, 2012.
2 Issued May 13, 2014.
3 In addition to Registration No. 4531148 claimed in the application, Applicant additionally
claims prior ownership of Principal Register Registration No. 4309273 for the stylized mark
(Los Angeles disclaimed) for “Coffee cups, tea cups and mugs” in Class 21
and “T-Shirts” in Class 25.
Serial No. 86631108
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(2) Applicant’s mark has independently acquired
distinctiveness and secondary meaning; and
(3) Applicant’s mark is registrable with Applicant’s
disclaimer of the word portion of the stylized mark.
Although Applicant did not explicitly indicate that it was claiming acquired
distinctiveness in the alternative, given the nature of the response we presume that
was Applicant’s intent and we proceed accordingly.
The Examining Attorney on March 7, 2016, issued a second Office Action
maintaining the Section 2(e)(2) refusal, withdrawing the requirement to withdraw
the voluntary disclaimer, and additionally refusing registration under Trademark
Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1), on the ground that the applied-for mark
merely describes a feature of Applicant’s services, further indicating that Applicant’s
evidence of acquired distinctiveness is insufficient.
In response, Applicant proffered arguments in support of registration and made
of record additional evidence in support of its claim of acquired distinctiveness.
In her Final Office Action, issued September 24, 2016, the Examining Attorney
withdrew the Section 2(e)(2) refusal, and finally refused registration on the ground
that the applied-for mark merely describes a feature of the identified services, and
that Applicant has not provided sufficient evidence to establish acquired
distinctiveness under Trademark Act Section 2(f), 15 U.S.C. § 1052(f).
Applicant appealed and both Applicant and the Examining Attorney filed briefs.
For the reasons discussed below, we affirm the refusal to register.
Serial No. 86631108
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Evidentiary Objection
Before proceeding to the merits of the refusal, we address an evidentiary matter.
The Examining Attorney objects to the declaration of Adam Burke, Applicant’s Chief
Administrative Officer, submitted for the first time with Applicant’s brief, arguing
that it is untimely and should be disregarded. Pursuant to Trademark Rule 1.142(d),
37 C.F.R. § 2.142(d):
The record in the application should be complete prior to
the filing of an appeal. Evidence should not be filed with
the Board after the filing of a notice of appeal. If the
appellant or the examining attorney desires to introduce
additional evidence after an appeal is filed, the appellant
or the examining attorney should submit a request to the
Board to suspend the appeal and to remand the application
for further examination.
As noted, the evidentiary record should be complete prior to the filing of an ex
parte appeal. Therefore, exhibits attached to an applicant’s brief that were not
submitted during prosecution of the application generally are untimely. In re Jimmy
Moore LLC, 119 USPQ2d 1764, 1767 (TTAB 2016); In re Hollywood Lawyers Online,
110 USPQ2d 1852, 1856-57 (TTAB 2014) (refusing to consider new evidence attached
to the brief); see also Trademark Board Manual of Procedure § 1203.02(e) (January
2017). In view of foregoing, the Examining Attorney’s objection is sustained, and we
give no further consideration to the Burke declaration.
Arguments and Evidence
We turn then to the merits of this proceeding. The Examining Attorney maintains
that Applicant’s applied-for mark is merely descriptive of a feature of
Serial No. 86631108
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the identified services; and that stylized font [is neither inherently distinctive] nor
has acquired distinctiveness under Section 2(f).
Applicant, in traversing the refusal of registration, admits that the wording “Los
Angeles” is merely descriptive of its identified services and has disclaimed it, but
contends that its applied-for mark , in its stylized “proprietary font,” is
not, because it is registrable with the disclaimer of the word portion of the stylized
mark, and because it has acquired distinctiveness.
There is no question that the literal component of Applicant’s mark, the wording
LOS ANGELES, is, by Applicant’s admission and its inclusion in the recitation of
services, merely descriptive of the identified services. Accordingly, we consider
whether the style of display renders the mark registrable. As the Board stated in In
re Sadoru Group Ltd., 105 USPQ2d 1484, 1486 (TTAB 2012) citing In re Guilford
Mills Inc., 33 USPQ2d 1042, 1043 (TTAB 1994):
A display of descriptive or otherwise unregistrable matter
is not registrable on the Principal Register unless the
design features of the asserted mark create an impression
on the purchasers separate and apart from the impression
made by the words themselves, or if it can be shown by
evidence that the particular display which the applicant
has adopted has acquired distinctiveness.
We therefore look first to the stylization of the wording LOS ANGELES to determine
if it creates a separate and inherently distinctive impression. We note in this regard
that the determination of whether the stylization of a term that is otherwise
unregistrable is inherently distinctive is a subjective one based on the first
impression of the viewer. See In re Jackson Hole Ski Corp., 190 USPQ 175, 176
Serial No. 86631108
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(“‘[D]istinctive display’ is in the eyes of the beholder, and usually depends upon the
viewer’s first impression of the matter in question.”).
Applicant maintains that “[t]he Examining Attorney erred in finding that the
Mark’s stylization is not sufficiently [sic] ‘sufficiently striking, unique, or
distinctive.’”4 We disagree. Unlike the stylizations of the marks used in the cases
relied upon by Applicant in support of its position,5 the script, consisting primarily of
stylized cursive lettering which Applicant characterizes as being “proprietary,” does
not make Applicant’s applied-for mark registrable because it is not so striking that it
creates an inherently distinctive impression apart from the wording itself. Instead,
as the Examining Attorney notes, “[t]he stylization is minimal and give[s] the
impression simply that the words are hand-written [in cursive lettering], rather than
typed or graphically designed.” See, e.g., In re Cordua Rests. LP, 110 USPQ2d 1227
(TTAB 2014), aff’d 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016) (the stylization
of found insufficient to create an inherently distinctive impression apart
from the term itself); Sadoru Group Ltd., supra (the stylization of found
insufficient to create an inherently distinctive impression apart from the term itself);
In re Grande Cheese Co., 2 USPQ2d 1447, 1449 (TTAB 1986) (the stylization of
found not inherently distinctive); In re Miller Brewing Company, 226

4 4 TTABVUE 18.
5 See, e.g., Jackson Hole Ski, supra. ( , as stylized, found inherently distinctive); In
re Venturi, 197 USPQ 714 (TTAB 1977) ( , as stylized, found inherently distinctive).
Serial No. 86631108
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USPQ 666, 669 (TTAB 1985) (the stylization of found not inherently
distinctive). Accordingly, the stylistic elements do not obviate the descriptive
significance of the wording. While the font utilized by Applicant may have been
commissioned solely for Applicant’s use, that fact alone does not make it any more
striking or distinctive.
Moreover, Applicant’s reliance on the determinations made in previous cases is
misplaced. It is well settled that each case must be decided on its own merits. The
determination of registrability of a mark in another case does not control the merits
in the case now before us. See In re Nett Designs Inc., 51 USPQ2d at 1566; see also,
In re Kent-Gamebore Corp., 59 USPQ2d 1373 (TTAB 2001); In re Wilson, 57 USPQ2d
1863 (TTAB 2001). In this case, plain wording of the recitation of services and the
evidence of record clearly demonstrate that Applicant’s applied-for stylized mark
is merely descriptive of an important feature of Applicant’s services
and informs consumers that Applicant’s identified convention and visitor’s bureau
services, as well as the recited tourism and business promotion services, are directed
to the Los Angeles area.
Having found that the stylization does not create a separate and inherently
distinctive impression, we then must determine whether the stylization used in
Applicant applied-for mark has acquired distinctiveness. “To establish secondary
meaning, or acquired distinctiveness, an applicant must show that in the minds of
the public, the primary significance of a product [or service] feature or term is to
identify the source of the product [or services] rather than the product itself.” Coach
Serial No. 86631108
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Svcs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1729 (Fed.
Cir. 2012) (internal quotation marks omitted). We determine whether Applicant's
asserted mark has acquired distinctiveness based on the entire record, keeping in
mind that “[t]he applicant … bears the burden of proving acquired distinctiveness.”
In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262, 1264 (Fed. Cir.
2015) (citation omitted); Yamaha Int’l Corp. v. Hoshino Gakki Co., Ltd., 6 USPQ2d
1001 (Fed. Cir. 1988). Evidence of acquired distinctiveness can include the length of
use of the mark, advertising expenditures, sales, survey evidence, and affidavits
asserting source-indicating recognition. See In re Bongrain International Corp., 894
F.2d 1316, 13 USPQ2d 1727 (Fed. Cir. 1990). The amount and character of evidence
required to establish acquired distinctiveness depends on the facts of each case and
the nature of the mark sought to be registered. See Roux Labs., Inc. v. Clairol Inc.,
427 F.2d 823, 166 USPQ 34, 39 (CCPA 1970). Typically, more evidence is required
where a mark is such that purchasers seeing the matter in relation to the offered
goods or services would be less likely to believe that it indicates source in any one
party. Bongrain Int'l Corp., 13 USPQ2d at 1729 n.9.
Applicant’s claim of acquired distinctiveness is three-fold. First, Applicant claims
that is has substantially exclusive use of the wording LOS ANGELES in a
“proprietary” stylized lettering for at least five-years. Second, Applicant contends
that it has proffered sufficient evidence to show acquired distinctiveness, and third,
Applicant cites to a prior registration for a “legally equivalent mark.”
Serial No. 86631108
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With regard to Applicant’s claim of five-years use, the Trademark Act provides
that the United States Patent and Trademark Office (“USPTO”) may accept five years
use as prima facie evidence of distinctiveness. However, such use must be
“substantially exclusive and continuous.” Trademark Act § 2(f). In that regard, it has
been held that:
In respect of registration, there must be a trademark, i.e.,
purchasers in the marketplace must be able to recognize
that a term or device has or has acquired such
distinctiveness that it may be relied on as indicating one
source of quality control and thus one quality standard.
Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 222 USPQ 939, 940-41 (Fed. Cir.
1984); see also Target Brands Inc. v. Hughes, 85 USPQ2d 1676, 1682 (TTAB 2007).
Here, the Examining Attorney made of record examples showing that numerous
convention and visitors bureaus have used a very similar structure, i.e., the use of a
geographic locale, descriptively, with some in a stylized font, in connection with
similar or related services. The examples include:
• A directory of Convention & Visitors Bureaus, all listed by the name of the city
where they operate;6

• The website for the Denver tourism bureau, using DENVER at the top of the
page;7

• The website for the Alexandria Visitor Center, using ALEXANDRIA at the top
of the page;8 p. 8 – 13

6 July 12, 2017 Office Action, TSDR 2.
7 Id. at TSDR 3-7.
8 Id. at TSDR 8-13.
Serial No. 86631108
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• The website for the New Orleans Convention & Visitors Bureau, using NEW
ORLEANS at the top of the page;9 and

• The website for the Greater Boston Convention & Visitors Bureau, using
BOSTON at the top of the page10. p. 16 – 18

Because of the common descriptive use of such similar word structure, it is
unlikely that consumers of Applicant’s services will recognize Applicant’s applied-for
mark as indicating a single source for Applicant’s services, regardless of the length of
use. Rather, consumers are likely to view as one of many convention or
visitors bureaus providing information regarding the named geographical location.
As regards its evidence of acquired distinctiveness, Applicant submitted with its
February 29, 2016 response, the declaration of its Chief Administrative Office, Cathy
Berg, stating, among other things, that:
The mark was used by Applicant (or its related company, licensee, or predecessor
in interest) at least as early as June 12, 2012;
The stylized font used was commissioned by Applicant specifically to be used as a
trademark and for licensing purposes, to distinguish it from other uses of the term
LOS ANGELES; and
The Mark in its stylized form has become distinctive of the services as a result of
the factors listed below.

9 Id. at TSDR 14-15
10 Id. at TSDR 16-18.
Serial No. 86631108
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• Gross sales totaling “millions of dollars” for use of the Mark in conjunction with
the listed services and membership dues from local businesses, all of which
promote Applicant’s convention and visitors’ bureau services
• Continuous use of the Mark on Applicant’s website, which receives over one
million visitor a day
• Prominently displaying the Mark on signage and in elevators at its
headquarters and at the Los Angeles Visitor Information Center
• Policing efforts
Applicant also made of record the declaration of its Vice President for Marketing,
John Boudouvas, stating, among other things, that the mark was used by Applicant
(or its related company, licensee, or predecessor in interest) at least as early as June
12, 2012, and that the stylized font used was commissioned by Applicant specifically
to be used as a trademark and for licensing purposes, to distinguish it from other uses
of the term LOS ANGELES. (Boudouvas decl. at ¶¶ 3 and 4).11 The Boudouvas
declaration also introduces photographic and documentary evidence showing use of
the applied-for mark on the following:12 public signage; digital kiosks placed in
locations throughout the city; the Dine LA Week “Diners Award” stickers; letterhead
and business cards for the Los Angeles Tourism & Convention Board, the Los Angeles
Convention Center, the Los Angeles Sports & Entertainment Commission, and the
Los Angeles Tourism Marketing District; the Los Angeles Tourism & Convention

11 Applicant’s May 15, 2015 Response.
12 Id. at Boudouvas decl. at ¶5, Exs. A-S.
Serial No. 86631108
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Board website; use in print and “broadcast” advertising for a variety of locations,
attractions and activities; use on merchandise including t-shirts, sunglasses, hats,
notebooks, jewelry and tote and duffel bags; and use in marketing materials and
promotional videos. The mark appears most often as shown below.

Serial No. 86631108
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After carefully reviewing the evidence, we are not convinced that the consuming
public would attribute any source-indicating significance to the font in which
Serial No. 86631108
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Applicant’s mark is primarily displayed. Applicant’s evidence lacks “look for”
advertising or other promotional efforts to create an association in the minds of
consumers between the font in which LOS ANGELES is displayed and Applicant as
the source of the services. The Board and other courts have noted the importance of
such advertising in establishing acquired distinctiveness. See Mag Instrument Inc. v.
Brinkmann Corp., 96 USPQ2d 1701, 1723-24 (TTAB 2010) (perhaps most damaging
to showing of acquired distinctiveness is lack of any “look for” advertising); Duraco
Prods. Inc. v. Joy Plastic Enter., Ltd., 40 F.3d 1431, 1452, 32 USPQ2d 1724, 1741 (3d
Cir. 1994) (advertising expenditures “measured primarily with regard to those
advertisements which highlight the supposedly distinctive, identifying feature” of the
product configuration). Because the font is akin to cursive writing, the absence of
evidence to show that consumers perceive the cursive font in the applied-for mark
separate from the descriptive wording “LOS ANGELES,” and attribute said font
solely to Applicant, undercuts Applicant’s position. The advertising materials
provided by Applicant simply demonstrate that Applicant is engaged in promotional
efforts to bring travelers to the Los Angeles area by using the geographical term LOS
ANGELES as a draw.
Last, we consider Applicant’s claim of acquired distinctiveness based on its
ownership of Principal Register Registration No. 4309273 for the stylized mark
(Los Angeles disclaimed) for “Coffee cups, tea cups and mugs”;
and Registration No. 4531148 for the mark (Supplemental Register)
for “tote bags, hats and T-shirts.”
Serial No. 86631108
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Trademark Rule 2.41(a)(1), 37 C.F.R. § 2.41(a)(1), provides:
(a) For a trademark or service mark—
(1) Ownership of prior registration(s). In appropriate cases,
ownership of one or more active prior registrations on the
Principal Register or under the Trademark Act of 1905 of
the same mark may be accepted as prima facie evidence of
distinctiveness if the goods or services are sufficiently
similar to the goods or services in the application; however,
further evidence may be required.
In this case Registration No. 4531148 is registered on the Supplemental Register
and Registration No. 4309273 included a disclaimer of the wording LOS ANGELES.
As such, neither may be accepted as prima facie evidence of acquired distinctiveness.
See TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 1212.04
(2017), and the cases cited therein.
Even if they had been registered on the Principal Register without a disclaimer,
neither Registration No. 4309273 nor Registration 4531148 cover services similar to
those recited in the involved application; rather both registrations identify goods
generally recognized as souvenir items. In addition, the mark in Registration No.
4309273 is not the same as the one Applicant now seeks to register. A proposed mark
is the "same mark" as a previously registered mark as required by Trademark Rule
2.41(a)(1) if it is the "legal equivalent" of such a mark. "A mark is the legal equivalent
of another if it creates the same, continuing commercial impression such that the
consumer would consider them both the same mark." In re Dial-A-Mattress Operating
Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001); see also In re
Brouwerij Bosteels, 96 USPQ2d 1414, 1423 (TTAB 2010) (finding three-dimensional
product packaging trade dress mark is not the legal equivalent of a two-dimensional
Serial No. 86631108
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design logo). Here, the addition of the word DISCOVER alters the commercial
impression engendered by the term LOS ANGELES alone; Los Angeles evokes the
impression of a geographical location while the word DISCOVER LOS ANGELES
suggests exploration of that location. Inasmuch as the prior registrations do not meet
the requirements set forth in Trademark Rule 2.41(a)(1), they do not suffice to
establish acquired distinctiveness.
In conclusion, the record simply does not support a finding that the stylized
wording has acquired distinctiveness as an indicator of source of
Applicant’s “convention and visitors bureau services, namely, promoting business
and tourism in the Los Angeles area; convention and visitors bureau services, namely,
promoting business, tourism and the holding of conventions in the Los Angeles area;
convention and visitors bureau services, namely, promoting tourism, business and
conventions in and around the Los Angeles area; promoting recreation and tourism
in Los Angeles; promoting tourism in Los Angeles area.” Accordingly, we find that
the wording has not acquired distinctiveness in connection with the identified
services.
Decision: The refusal to register the stylized applied-for mark is
affirmed.