MDF Italia SPA

Trademark Trial and Appeal Board

Aug 21, 2012

No. 79063250 (T.T.A.B. Aug. 21, 2012)

Hearing: February 2, 2012 Mailed: August 21, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re MDF Italia SPA
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Serial No. 79063250
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Dean R. Karau for MDF Italia SPA.

Timothy J. Finnegan, Trademark Examining Attorney, Law
Office 104 (Chris Doninger, Managing Attorney).
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Before Seeherman, Zervas and Greenbaum, Administrative
Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:

MFD Italia SPA filed an application to register, on
the Principal Register, the mark MDF IT (stylized) shown
below

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 79063250
2

for a variety of goods in International Classes 6, 16 and
21.1
The description of the mark entered by applicant reads
as follows:
The trademark consists of an almost quadrangular print
having a red background, where the wording "MDF" is
written in white, with the letter "M" forming a part
of the border itself; on the lower right-hand side of
the mark appears the wording "IT" in white, in small,
fancy characters.

Applicant claims the colors red and white as a feature of
the mark. In addition, applicant disclaimed MDF apart from
the mark as shown.
The examining attorney refused registration under
Section 2(e)(2) of the Trademark Act, 15 U.S.C.
§ 1052(e)(2), because the mark is primarily geographically
descriptive of applicant’s goods.
When the refusal was made final, applicant
concurrently filed a request for reconsideration, which the
examining attorney denied, and an appeal of the final
refusal. The appeal is fully briefed, and an oral hearing
was held. We reverse.

1 The application is based upon a request for extension of
protection under Section 66(a) of the Trademark Act, 15 U.S.C.
§ 1141f(a), and International Registration No. 0987876, issued
August 5, 2008.
Serial No. 79063250
3

Section 2(e)(2) of the Trademark Act prohibits the
registration of a mark which, when used on or in connection
with the goods or services of an applicant, is primarily
geographically descriptive of them. In order to establish
that a mark is primarily geographically descriptive, the
examining attorney must show that (1) the primary
significance of the mark as it is used is a generally known
geographic place; and (2) the relevant public would be
likely to make a goods/place association, i.e., believe
that the goods for which the mark is sought to be
registered originate in that place. See In re Jacques
Bernier Inc., 894 F.2d 389, 13 USPQ2d 1725 (Fed. Cir.
1990); In re Societe General des Eaux Minerals de Vittel
S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); In re
Spirits of New Merced LLC, 85 USPQ2d 1614, 1616 (TTAB
2007). If the goods do, in fact, originate from the place
named in the mark, the requisite goods/place association
can be presumed. In re Carolina Apparel, 48 USPQ2d 1542
(TTAB 1998).
We turn our attention first to the question of whether
the primary significance of the mark is that of a
geographic location. In making this determination, we are
mindful that a mark generally is not considered “primarily”
geographic if it has a well-known meaning independent from
Serial No. 79063250
4

its geographical meaning. See In re International Taste
Inc., 53 USPQ2d 1604, 1605-06 (TTAB 2000) (HOLLYWOOD not
primarily geographic because of other prominent,
significant meaning referring to entertainment industry);
and In re Jim Crockett Promotions Inc., 5 USPQ2d 1455, 1456
(TTAB 1987) (primary significance of THE GREAT AMERICAN
BASH suggests desirable quality or excellence, not
geographic origin of services).
The examining attorney takes the position that
applicant’s mark is geographically descriptive because the
designation IT in applicant’s mark primarily denotes a
geographic location, namely, Italy. The examining attorney
points out that MDF, which has been disclaimed, is merely
an acronym for the descriptive term medium density
fiberboard, and would be recognized as such when used in
connection with applicant’s furniture and related goods.
Although the examining attorney has submitted evidence
that IT is a recognized abbreviation for Italy,2 the term
IT, as used in applicant’s mark, also has a significant,
non-geographic meaning as the common pronoun “it”. This
meaning is reinforced by the manner in which IT is depicted
in the mark, as lower case script letters. We note that

2 See printout from www.acronymfinder.com attached to the January
12, 2009 Office action.
Serial No. 79063250
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the examining attorney came to a similar conclusion as to
the pronoun meaning of IT when he initially withdrew the
Section 2(e)(2) refusal (only to reinstate it following
Office review). As the examining attorney stated in his
August 3, 2009 note to the file, “the mark, at first
impression, can be read as the double entendre ‘MDF IT’,
that is, use medium density fiberboard for the applicant’s
goods, furniture.”
In view of our finding that IT is not primarily a
geographical term, we need not reach the question of
whether the examining attorney has established a
goods/place association between the term and the applied-
for goods.
Accordingly, the refusal under Section 2(e)(2) of the
Trademark Act, 15 U.S.C. § 1052 (e)(2), is reversed.