Milano Hat Co., Inc.

Trademark Trial and Appeal Board

Mar 27, 2002

No. 75199511 (T.T.A.B. Mar. 27, 2002)

3/27/02

Paper No. 14
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Milano Hat Company, Inc.
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Serial No. 75/199,511
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Alan W. Lintel of Anderson, Levine & Lintel, L.L.P. for
Milano Hat Company, Inc.

Keith Weltsch, Trademark Examining Attorney, Law Office 102
(Thomas Shaw, Managing Attorney).
_______

Before Hairston, Bucher and Bottorff, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

An application has been filed by the Milano Hat
Company, Inc. to register the composite mark MILANO and
design, as shown below,

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/199,511
2
for “western wear, namely, shirts.”1
Registration has been refused under Sections 2(e)(3)
and 2(a) of the Trademark Act on the grounds that the mark
is geographically deceptively misdescriptive and
geographically deceptive. It is the Examining Attorney’s
position that if applicant were to use the mark on the
identified goods, purchasers would mistakenly believe that
the goods originate in Milan, Italy, and that this
misunderstanding would be a material factor in the
purchasing decision.
Applicant has appealed. Briefs have been filed, but
no oral hearing was requested.
The test for determining whether a mark is
geographically deceptive under Section 2(a) is set forth in
Institut National des Appellations D’Origine v. Vintners
International Co., Inc., 958 F.2d 1574, 22 USPQ2d 1190,
1195 (Fed. Cir. 1992). The test consists of three
elements, the first two of which also comprise the test for
determining whether a mark is geographically deceptively

1 Serial No. 75/199,511 filed November 18, 1996, based on an allegation
of a bona fide intention to use the mark in commerce. The pictorial
representation of Italy has been disclaimed apart from the mark as
shown.
Ser No. 75/199,511
3
misdescriptive under Section 2(e)(3). The elements are as
follows:
1. Whether the primary significance of the
mark as it is used is a generally known
geographic place;

2. Whether purchasers are likely to
believe, mistakenly, that the goods or
services sold under applicant’s mark
have their origin in or are somehow
connected with the geographic place
named in the mark and, if so;

3. Whether a purchaser’s mistaken
belief as to the geographic origin
of the goods or services would
materially affect that purchaser’s
decision to buy the goods or services
sold under the mark.

At the outset, we note that applicant is incorporated
in the state of Texas and has indicated that its shirts
will not be manufactured or produced in Milan, Italy.
Further, there is no dispute that the term “Milano” is
Italian for the city of Milan in Italy.2

2 In this regard, the Examining Attorney submitted an entry from
Webster’s New Geographical Dictionary (1988), the relevant portion of
which is reproduced below:

Ser No. 75/199,511
4
In urging reversal of the refusals to register,
applicant argues that the primary significance of the term
Milano is not geographic. Rather, applicant maintains that
the primary significance of Milano is as a surname, and
that applicant selected the applied-for mark because of the
surname of its founder, John Milano, and not because of any
desired connection with Milan. According to applicant, it
is a company which is internationally known for its western
hats, and, thus, prospective purchasers will associate the
applied-for mark with applicant, the Milano Hat Company,
and not the city of Milan.
Further, applicant maintains that western wear is
indigenous to the United States, and that no appreciable
amount of western wear has ever been designed or produced
in Milan. According to applicant, the Examining Attorney
has presented no evidence that any Milanese company has a
favorable reputation as a western wear provider. Applicant
maintains that while Milan may be well known for haute
couture clothing, it is not known for the design or
manufacture of western wear. Finally, applicant states
that the star on the map of Italy in the drawing of its
mark designates the city of Sorrento, which is located is
located in the southern part of Italy, and is the
birthplace of applicant’s founder. Applicant maintains
Ser No. 75/199,511
5
that there will be no deception in this case because the
star serves to negate any connection with Milan, which is
located in the northernmost part of Italy.
Applicant offered the declaration of Clay Cavender,
vice-president and head buyer of Cavender’s Boot City, a
chain of approximately forty western wear stores located
throughout Texas. According to Mr. Cavender, Cavender’s
Boot City is one of the largest sellers of western wear
products in the country. Mr. Cavender states that he is
familiar with buyer preferences in relation to western wear
and that he has purchased products from applicant for many
years for sale in Cavender’s Boot City stores. Further,
Mr. Cavender states that to his knowledge, no customer has
ever purchased or considered purchasing applicant’s
products sold under the same or similar mark involved
herein under the impression that the products had a
connection with Milan; that customers of western wear
prefer that such goods come from a company based in the
southwest United States rather than from a company in a
“high fashion” center such as Milan, Paris, London or New
York; and that no significant number of consumers of
western wear has been or will be deceived with regard to
any geographic connection to Milan by applicant’s mark as
used on western clothing.
Ser No. 75/199,511
6
It is the Examining Attorney’s position that the
primary significance of applicant’s mark as a whole is the
geographic place Milan, Italy. As noted previously, the
Examining Attorney submitted a dictionary entry with regard
to the term “Milano.” The Examining Attorney acknowledges
that the entire mark is more than the word MILANO.
However, the Examining Attorney argues that the pictorial
representation of Italy in the drawing of the mark
reinforces the geographic connotation of the mark as a
whole.
Further, in view of the evidence of a goods/place
association between clothing and Milan, and the fame of
Milan as a fashion center, the Examining Attorney argues
that the public will be likely to believe that applicant’s
goods come from Milan and this belief will materially
affect the public’s decision to buy applicant’s goods.
Turning first to the question of geographically
deceptive misdescriptiveness, we agree with the Examining
Attorney that applicant’s mark MILANO and design is
primarily geographically deceptively misdescriptive of
applicant’s goods. That is, purchasers would be likely to
believe that western shirts sold under applicant’s mark
originated in or were somehow connected with Milan. While
it appears that the term “Milano” has some surname
Ser No. 75/199,511
7
significance, the evidence of record demonstrates that the
primary significance of the term is geographical.
Applicant has presented no evidence that “Milano” is a
common surname. Moreover, we agree with the Examining
Attorney that the pictorial representation of Italy in the
drawing of the mark reinforces the geographic connotation.
Most American consumers would certainly recognize the
pictorial representation as Italy and along with the word
MILANO would make an association with Milan. On the other
hand, we are not convinced that most Americans would know
that the star is in the location of Sorrento, rather than
Milan. Thus, contrary to applicant, we do not find that
the star negates any association with Milan. Also, in our
minds, the lasso which surrounds the term MILANO and the
pictorial representation of Italy does not detract from the
geographic significance of the mark, but instead serves to
convey that the goods are western in nature with a Milan
origin or connection.
With respect to applicant’s argument that customers
will understand that MILANO in its mark refers to applicant
and not the city of Milan, while customers who have some
familiarity with applicant may well recognize this, our
concern is not limited to these customers. Rather, we must
concern ourselves with the purchasing public in general,
Ser No. 75/199,511
8
and purchasers who are not familiar with applicant would be
free to make the association between the city of Milan and
applicant’s goods.
Turning then to the question of whether purchasers are
likely to make a goods/place association between western
shirts and Milan, we find that the Examining Attorney has
submitted ample evidence to support such an association.
In addition to the dictionary entry which indicates that
Milan is a producer of clothing, the Examining Attorney
submitted Nexis excerpts which demonstrate that, as applied
to items of clothing, the primary significance of Milan is
geographical given Milan’s reputation as a center of
fashion apparel. Examples are set forth below.
Spurring Milan’s growth as a high-fashion
hub are a handful of design houses such as
Krizia, Versace, and Ferre, whose ties to
Italian textile giants give them global
reach.
(Business Week; July 20, 1987);

Although no strangers to fashion – the word
“millinery” comes from “Milaner” – the
Milanese have become a major power in the
the international fashion world in just
the last decade. Fashion generates more
than $10 billion in sales for Italy, almost
half of which comes from exports. Even the
French, vaunted masters of the fashion
world, come here to buy much of their fabric,
as do many of America’s top designers.

Ser No. 75/199,511
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Over the past decade, Milan has come to
rival New York and Paris as one of the
world’s fashion centers.
(The Boston Globe; November 10, 1997); and

Okun is constantly at work with the company’s
customer base. And he travels all over to
the world’s fashion centers: Paris, London,
Milan, attending all the important fashion
shows and functions.
(Textile World; June 1996).

Further, the Examining Attorney made of record Nexis
excerpts which demonstrate that western wear, in
particular, debuts or premieres in Milan.
Every few years, as faithfully as a
Yellowstone geyser, fashion goes cowboy
crazy. Rodeo gaga. Boots, hats, beadwork,
fringe – the icons of Western mythology
suddenly start appearing on the likes of
Madonna and Kate Moss and in places far,
far from the Santa Fe Plaza or Mesquite
Rodeo . . . Although this may be the
biggest year for Westernalia since the
roundup of ’88, the specifics have changed
just enough to require that we all go
shopping. Far from “Urban Cowboy’s” boot-
scootin’ flash or “Lonesome Dove’s” dusty
drovers, the latest spin on Western is
rooted not in Laramie or Dodge, but in
New York, Paris and Milan.
(Pittsburgh Post-Gazette; September 19,
1999);

Last summer, fashion magazines targeting
both men and women touted “Vegas chic”—
fringed and beaded jackets, skirts and
pants, for instance . . . as the style
to mimic. The industry’s affinity for
all things Western carried over into the
fall and winter, when people attending
the fashion shows in New York, Paris and
Milan turned out in dark denim outfits
accented with scrunched cowboy hats and
Ser No. 75/199,511
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gleaming black boots.

Your father’s suits, your son’s cowboy
boots, the animal skin rug in your den
should form about the right inspirational
mix for your fall fashion wardrobe, if
the European shows have any say. In
Milan, London and Paris, the world’s top
designers are going for menswear
inspirations, American Western wear and
animal prints in the clothes that will
come here in may forms for fall and
winter.
(The Boston Globe; March 23, 1992); and

“Here in Italy, I’m seeing a lot of big
Western buckles, as well as exotic cowboy
boots,” said Julian by phone from a trend-
watching trip to Milan. The revival of the
Western look as fashion fare is hitting in
the high-end designer category, says Julian.
(The Times-Picayune; January 16, 2001).

This record establishes Milan’s prominence as a center
of fashion, including western wear, and the public would be
likely to believe that applicant’s shirts originate in or
are somehow connected with Milan. The declaration of Mr.
Cavender does not rebut this prima facie case. While
traditional customers of western wear may be knowledgeable
about its origins and may even prefer that it come from
companies located in the southwest United States, our
concern is not limited to such individuals. There is no
question that western wear is sold to the buying public at
large, and that from time to time, western styles are in
fashion. Thus, the average purchaser would be likely to
Ser No. 75/199,511
11
believe, mistakenly, because of the association between
Milan and clothing, that applicant’s western shirts
originate in or are somehow connected to Milan.
The final question then is whether the geographical
misdescription created by applicant’s mark has been shown
to be material to the purchase of western shirts bearing
the mark. We find that it has. The evidence put forth by
the Examining Attorney demonstrates the fame of Milan as a
center of fashion and its reputation for fine quality and
famous designers. Thus, there is no question that a Milan
connection would more appealing or desirable to prospective
purchasers, and thus, this factor would be material to the
decision to purchase such clothing.
Decision: The refusals to register under Section
2(e)(3) and 2(a) of the Trademark Act are affirmed.