Michael Brian Hinden and Janeen Mary Judge

Trademark Trial and Appeal Board

May 26, 1999

No. 75100086 (T.T.A.B. May. 26, 1999)

Paper No. 10
PTH
THIS DISPOSITIION IS
NOT CITABLE AS PRECEDENT OF THE TTAB MAY 26,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Michael Brian Hinden and
Janeen Mary Judge
________
Serial No. 75/100,086
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Evelyn M. Sommer of Skadden, Arps, Slate, Meagher & Flom
LLP for Michael Brian Hinden and Janeen Mary Judge.
Montia O. Givens, Trademark Examining Attorney, Law Office
101 (R. Ellsworth Williams, Managing Attorney).
_______
Before Cissel, Hohein and Hairston, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Michael Brian Hinden and Janeen Mary Judge have filed
an application to register the mark NEW YORK WATER for
“bottled drinking water.”1
Registration has been refused under Section 2(e)(2) of
the Trademark Act, 15 U.S.C. §1052(e)(2), on the ground
Ser No. 75/100,086
2
that the mark is primarily geographically descriptive of
the identified goods.
When the refusal was made final, applicants appealed.
The case has been fully briefed, but no oral hearing was
requested.
In order for registration to be properly refused under
Section 2(e)(2) of the Trademark Act, it is necessary to
establish that (1) the primary significance of the mark
sought to be registered is the name of a place generally
known to the public and (2) the public would make a
goods/place association, that is, believe that the goods
for which the mark is sought to be registered originate in
that place. See, e.g., University Book Store v. University
of Wisconsin Board of Regents, 33 USPQ2d 1385, 1402 (TTAB
1994); and In re California Pizza Kitchen, Inc., 10 USPQ2d
1704, 1705 (TTAB 1988) citing In re Societe Generale des
Eaux Minerales de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450,
1452 (Fed. Cir. 1987). If these conditions are met, and
the goods come from the place named by or in the mark, the
mark is primarily geographically descriptive. Moreover,
where there is no genuine issue that the geographical
significance of a term is its primary significance, and

1 Application Serial No. 75/100,068 filed May 7, 1996; asserting
a bona fide intention to use the mark in commerce. The word
Ser No. 75/100,086
3
where the geographical place named by the term is neither
obscure or remote, a public association of the goods with
the place may ordinarily be presumed from the fact that the
applicant’s goods come from the geographical place named in
the mark. See, e.g., In re California Pizza Kitchen Inc.,
supra; and In re Handler Fenton Westerns, Inc., 214 USPQ
848, 850 (TTAB 1982). Also, the presence of a generic or
highly descriptive term in a mark which also contains a
primarily geographic descriptive term does not serve to
detract from the primary geographic significance of the
mark as a whole. See, e.g., In re Cambridge Digital
Systems, 1 USPQ2d 1659, 1662 (TTAB 1986); and In re
BankAmerica Corp., 231 USPQ 873, 875 (TTAB 1986).
With respect to the geographic significance of the
term NEW YORK, applicants argue that NEW YORK has “a
further meaning in addition to its geographical
significance.” (Brief, p. 2) In particular, applicants
maintain that NEW YORK conveys a “big city” feeling to its
product, and that “it is the grandness, the excitement, and
the best-in-the-world impression one would get from the
term NEW YORK that is intended to be imported to
applicant’s products by the use of the mark ‘NEW YORK
WATER.’” (Brief, p. 3).

“WATER” has been disclaimed apart from the mark as shown.
Ser No. 75/100,086
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In this case, however, we agree with the Examining
Attorney that the primary connotation of the term NEW YORK,
as used in the mark NEW YORK WATER, is geographical. In
this regard, the Examining Attorney offered a definition
from The Random House Dictionary of the English Language
(1987) which shows that New York is a place that is neither
obscure or remote. Also, we note that applicants have
disclaimed exclusive rights to the word “WATER,” thereby
conceding the genericness of this word in connection with
bottled drinking water.
We find, therefore, that the primary significance of
NEW YORK WATER to the public would be its geographical
significance.
Turning then to the second part of the test for
geographical descriptiveness, applicants maintain that the
public would not make the requisite goods/place
association; i.e., believe that the applicants’ goods
originate in NEW YORK. Applicants contend that New York is
not noted for its drinking water.
However, as noted above, absent a genuine issue that
the term is remote or obscure or that its primary
significance is other than geographical, a goods/place
Ser No. 75/100,086
5
association may be presumed from the fact that applicant’s
goods will come from the place named in the mark.2 As

2 Applicants have indicated that their bottled drinking water
will come from New York City.
Ser No. 75/100,086
6
discussed above, there is no genuine issue that New York
City is not a remote or obscure geographical location, and
that, as used in applicants’ mark, the primary significance
of NEW YORK is geographical.
We note that the Examining Attorney also contends that
there is a goods/place association here because New York’s
drinking water has been highly rated in taste tests. In
this regard, she submitted excerpts from the NEXIS data
base which concern New York’s drinking (tap) water. While
we are not persuaded that such evidence establishes a
goods/place association between bottled drinking water and
New York, it is unnecessary in this case because a
goods/place association may be presumed from the fact
applicant’s goods will come from New York. We should add
that if applicants’ bottled drinking water were to
originate in some place other than New York, then the mark
NEW YORK WATER would be geographically misdescriptive of
applicants’ goods.
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We find therefore that NEW YORK WATER is primarily
geographically descriptive of applicants’ bottled drinking
water. 3
Decision: The refusal to register is affirmed.
R. F. Cissel
G. D. Hohein
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial and
Appeal Board

3 This case is readily distinguishable from In re Jim Crockett
Promotions Inc., 5 USPQ2d 1455 (TTAB 1987) [THE GREAT AMERICAN
BASH is not primarily geographically descriptive of promoting
professional wrestling matches]. In Crockett, the term GREAT
AMERICAN was found to suggest some desirable quality or
excellence and BASH was not generic or highly descriptive of
services involving wrestling matches.
Ser No. 75/100,086
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