Missouri Basin Municipal Power Agency

Trademark Trial and Appeal Board

Sep 20, 2001

No. 75977753 (T.T.A.B. Sep. 20, 2001)

9/20/01

Hearing: Paper No. 19
06 JUN 2001 AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Missouri Basin Municipal Power Agency
________

Serial No. 75/977,753
_______

Sri K. Sankaran of Dorsey & Whitney, LLP for Missouri Basin
Municipal Power Agency.

Janice O’Lear, Managing Attorney, Law Office 112.
_______

Before Simms, Hanak and Drost, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On April 15, 1998, Missouri Basin Municipal Power
Agency (applicant) filed an intent-to-use application to
register the mark:

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/977,753
2
for services ultimately identified as:
Bill payment services in International Class 36;

Maintenance of utility distribution lines in
International Class 37;

Public utility services in International Class 39; and

Energy management, namely, energy engineering and
technical consultation services relating to
development, control, production, use, purchase and
conservation of energy; legislative consulting and
lobbying services in the utility field in
International Class 42.1

On July 27, 1998, applicant filed an Amendment to
Allege Use of the mark for all four classes. The Amendment
alleged a date of first use and a date of first use in
commerce of May 1, 1998.
The Examining Attorney has required a disclaimer of
the words “Missouri River Energy Services” under the
provisions of §§ 2(e) and 6(a) of the Trademark Act. 15
U.S.C. §§ 1052(e) and 1056(a). The Examining Attorney
required a disclaimer because “such wording is primarily
geographically descriptive of the applicant’s services.”
Office Action dated December 22, 1998, p. 3. While
applicant did disclaim the words “Energy Services,” it did
not disclaim the words, “Missouri River.” At that point,
the Examining Attorney made the refusal to register the

1 Serial No. 75/977,753.
Ser. No. 75/977,753
3
mark “MISSOURI RIVER ENERGY SERVICES” and design without a
disclaimer of the term “MISSOURI RIVER ENERGY SERVICES”
final.2 After the refusal was made final, this appeal
followed. Applicant and the Examining Attorney have
submitted briefs, but only applicant appeared for an oral
hearing.
The Board has set out the following test to use in
determining whether a mark is primarily geographically
descriptive:
[T]he Trademark Examining attorney would need to
submit evidence to establish a public association of
the goods with that place if, the place named in the
mark may be so obscure or remote that purchasers would
fail to recognize the term as indicating the
geographical source of the goods to which the mark is
applied or (2) an admitted well-recognized term may
have other meanings, such that the term’s geographical
significance may not be the primary significance to
prospective purchasers. Where, on the other hand,
there is no genuine issue that the geographical
significance of a term is its primary significance and
where the geographical place is neither obscure nor
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.

2 The Examining Attorney’s Appeal Brief makes clear that the
requirement for a disclaimer was based on the Examining
Attorney’s determination that the “proposed mark is unregistrable
because it is primarily geographically descriptive of the
applicant’s services.” Appeal Brief, p. 1. While there is
language in the final Office action and the decision on
reconsideration that also refers to the descriptiveness of the
mark and Section 2(e)(1) of the Trademark Act, it is clear to us
that there is no independent “merely descriptive” basis to
require a disclaimer of the term “Missouri River” if the term is
ultimately determined not to be primarily geographically
descriptive.
Ser. No. 75/977,753
4

In re Handler Fenton Westerns, Inc., 214 USPQ 848, 849-50
(TTAB 1982).
We start our discussion with the applicant’s services
identified as “public utility services.” We conclude that
the term “Missouri River” is primarily geographically
descriptive for public utility services. Our initial
question is whether the term “Missouri River” is a
geographic term. Applicant asserts quite simply that
“[t]he Missouri River is a river. It is not a place.”
Applicant’s Br., p. 10. No doubt, the overwhelming
majority of geographically descriptive cases involve places
that are located on land. We note that even the TMEP does
not use the term “river” when it discusses geographical
descriptiveness. TMEP 1210.02 (“The name of a geographic
location such as a country, city, state, locality, region,
area or street is refused registration on the Principal
Register if it is primarily geographically descriptive…”).
However, there is case law supporting the argument that the
rivers and lakes can be geographic terms for purposes of
Section 2(e)(2) and 2(e)(3) of the Trademark Act. Some
cases date to the pre-Lanham Act days when a term was
refused registration if it merely appeared in an atlas or
gazetteer. In re Nantucket, Inc., 677 F.2d 95, 213 USPQ
Ser. No. 75/977,753
5
889, 892 (CCPA 1982) (See the discussion of pre-Lanham Act
case law on geographically descriptive cases). Examples of
rivers held geographically descriptive include the
following cases. In re California Perfume Co. Inc., 56
F.2d 885 (CCPA 1932) (AVON, name of a river in England) Ex
parte Kem Card Sales Corp., 39 USPQ 354 (Comm’r Pat. 1938)
(KEM, name of a river in Russia). More modern case law
also recognizes that names of rivers and lakes can be
geographically descriptive. Tonka Corp. v. Tonka Phone
Inc., 229 USPQ 747, 753 (D. Minn. 1985) (TONKA, commonly
used to refer to the Lake Minnetonka region in Minnesota,
is a geographical mark, but registration was
incontestable); Powder River Oil Co. v. Powder River
Petroleum Corp., 23 USPQ2d 1037, 1041 (Wyo. Sup. Ct. 1992)
(POWDER RIVER OIL COMPANY descriptive of the business and
the geographic area where the business is conducted).
While the case law on geographical descriptiveness for
rivers and lakes is less than overwhelming, we know of no
reason why the Trademark Act’s prohibition against the
registration of terms that are primarily geographically
descriptive would not include rivers and lakes within its
definition. 15 U.S.C. § 1052(e)(2). Certain products such
as fish actually come from rivers and lakes and certain
services such as boat tours are actually rendered on rivers
Ser. No. 75/977,753
6
and lakes. Thus, a blanket exemption for the names of
rivers and lakes from being geographically descriptive
would not be appropriate. However, the names of these
rivers and lakes are not always interchangeable with their
nearby land locations, so the name of a river may not
necessarily be primarily geographically descriptive of
goods manufactured or services performed near the lake or
river.
Another question we address concerns whether the term
“Missouri River” is remote or obscure, as applicant claims,
because in that case, the mark would not be primarily
geographically descriptive. The Federal Circuit has quoted
the Board as correctly saying:
[H]ere a refusal of registration is based on the
finding that a mark if primarily geographically
descriptive of the goods, that is, the goods actually
come from the geographical place designated in the
mark, the Examining Attorney must submit evidence to
establish a public association of the goods with the
place if, for example, there exists a genuine issue
raised that the place named in the mark is so obscure
or remote that purchasers would fail to recognize the
term as indicating the geographical source of the
goods.

In re Societe Generale Des Eaux Minerales de Vittel S.A.,
824 F.2d 957, 3 USPQ2d 1450, 1451 (Fed. Cir. 1987)
(emphasis by Court). In that case, the Court found that
the village of Vittel in the Voges region of France was
indeed remote and obscure. Similarly, we have found small
Ser. No. 75/977,753
7
villages in Germany to be remote and obscure, when the
village name is applied to beer brewed in those villages.
In re Brauerie: Aying Franz Inselkammer KG, 217 USPQ 73
(TTAB 1983) (Aying); In re Bavaria St. Pauli Brauerie AG,
222 USPQ 926 (TTAB 1984) (Jever).
The term “Missouri River” is obviously in a different
class of geographic terms, as viewed by potential
purchasers in this country, than the names of the European
villages of Vittel, Aying, and Jever. Even with the
limited evidence we have of record in this case, we can
easily discern that the Missouri River is a significant
geographic location.
Missouri 1. River, cen. and NW cen. U.S.; formed by
the confluence of Jefferson, Madison, and Gallatin
rivers in Gallatin co., S Montana; flows E to cen.
North Dakota, then S across South Dakota to form E
Section of South Dakota-Nebraska boundary, and the
Nebraska-Iowa and Nebraska-Missouri boundaries and the
N Section of the Kansas-Missouri boundary, turns E.
across cen. Missouri and joins the Mississippi River
ab. 10 mi. (16 km.) N of St. Louis; 2466 mi. (3968
km.) long (or 2683 mi. or 4317 km. incl. longest
tributaries to ultimate source) to its junction with
the Mississippi River. During high water, navigable
by flat-bottomed boats nearly to Great Falls, Montana.

Merriam-Webster’s Geographical Dictionary (3rd ed. 1998).
The Missouri River is over 2400 miles long and it
flows through or forms the border of Montana, North Dakota,
South Dakota, Nebraska, Iowa, and Missouri. It is
navigable as far as Montana, and one of the fifty States is
Ser. No. 75/977,753
8
named after it. Id. In the United States, which is the
only country we are concerned with in this analysis, we
have no doubt that the Missouri River is not a remote and
obscure term.
The next question is whether there is a services/place
relationship in this case. Normally, we can presume that
there is such a relationship if the goods or services come
from that place, and the place is not remote and obscure.
See Vittel and Handler Fenton. In this case, applicant has
clearly established that (1) there are hydroelectric power
plants on the Missouri River and (2) applicant’s member
utilities get power from the owner of these power plants.
Therefore, there is a services/place relationship between
the Missouri River and applicant’s utility services.
Applicant’s Chief Executive Officer acknowledged that:
There are hydroelectric plants on the Missouri River,
but these are owned and operated by the federal
government, and the power they generate is marketed by
WAPA [Western Area Power Administration].

Heller declaration, p. 6.

In addition, applicant’s members:

rely primarily on power allocated to them by the
federal government’s Western Area Power Administration
(“WAPA”), which markets the electricity from federally
owned generation facilities.

Heller declaration, p. 3.
Ser. No. 75/977,753
9
Also, applicant’s website notes that “[o]ur long term
members have allocations of hydroelectricity from the
Western Area Power Administration accounting for almost 60
percent of their power needs.”
http://www.mrenergy.com/resources.htm. Applicant
coordinates the delivery of its members’ WAPA allocations.
Id. Therefore, as applicant has established, the Missouri
River is the source of hydroelectric power. This power,
along with electricity from other sources, is allocated to
applicant’s member utilities, and applicant coordinates the
delivery of these allocations. Many of its members and
applicant are located in states that border the Missouri
River. Because there is a clearly established relationship
between electrical power and the Missouri River, we
conclude that the term “Missouri River” is primarily
geographically descriptive for applicant’s public utility
services and the power from the hydroelectric plants on the
Missouri River.
Next, we look to see if there is a services/place
relationship with applicant’s maintenance of utility
distribution lines and energy management, namely, energy
engineering and technical consultation services relating to
development, control, production, use, purchase and
Ser. No. 75/977,753
10
conservation of energy. Recently, the Court of Appeals for
the Federal Circuit has provided guidance on this subject.
In the modern marketing context geographic regions
that are noted for certain products or services
actively promote and adapt their specialties to fit
changing consumer needs. Thus we see no reason to
believe that a modern merchant of Venice would not
expand on the traditional Venetian products listed by
the Board, to begin marketing products or services
related to such goods. Similarly, for the consumer’s
perspective, we also find no reason to believe that
the public strictly limits its association of a place
to the geographic region’s traditional products or
services. Because we consider that consumers may
assume that geographic regions, like commercial
actors, are likely to expand from their traditional
goods or services into related goods or services, we
hold that the registrability of a geographic mark may
be measured against the public’s association of that
region with both its traditional goods and any related
goods or services that the public is likely to believe
originate there. The essence of the test is whether
consumers are likely to be confused by the source of
the related goods identified by a distinctive
geographic mark.

In re Save Venice New York, Inc., slip op., p. 11 (Fed.
Cir. July 27, 2001).
Here, we find that applicant’s “maintenance of utility
distribution lines” and “energy management, namely, energy
engineering and technical consultation services relating to
development, control, production, use, purchase and
conservation of energy” are related to applicant’s public
utility lines services. A source of public utility
services would likely also be the source of the related
services of maintaining utility distribution lines over
Ser. No. 75/977,753
11
which the power would be distributed and managing,
conserving and controlling energy.3 Therefore, we conclude
that the term “Missouri River” would be primarily
geographically descriptive of these services as well.
In addition to these arguments, we also make the
following points regarding the geographical descriptiveness
of the term “Missouri River” for public utility services.
First, we note that applicant’s term is not merely
“Missouri River” but “Missouri River Energy Services.”
Applicant has offered to disclaim the words “Energy
Services.” The fact that applicant has included highly
descriptive or generic wording along with its
geographically descriptive term does not convert a
geographic term into a non-geographic term. In re
Compagnie Generale Maritime, 993 F.2d 841, 26 USPQ2d 1652,
26 USPQ2d 1652 (Fed. Cir. 1993) (FRENCH LINE (stylized)
primarily geographically descriptive of goods and services
from France); In re Cambridge Digital Systems, 1 USPQ2d
1659, 1662 (TTAB 1986) (CAMBRIDGE DIGITAL and design
primarily geographically descriptive when applicant’s
palace of business is Cambridge, Massachusetts); In re

3 Inasmuch as the term is geographically descriptive of some of
the services in Class 42, we do not have to determine if it is
descriptive for all the services in the class in order for the
refusal to be proper. In re Analog Devices Inc., 6 USPQ2d 1808,
1810 (TTAB 1988).
Ser. No. 75/977,753
12
Carolina Apparel, 48 USPQ2d 1542, 1543 (TTAB 1998) (“The
addition of a generic term to a geographic term does not
avoid the refusal of primary geographic descriptiveness”).
Also, the fact that applicant’s services may be
offered outside the Missouri River area does not mean that
the term is no longer primarily geographically descriptive.
Compagnie Generale Maritime, 26 USPQ2d at 1655 (“Certainly,
all of the goods and services would either originate in
France or should be considered as if they did because they
are sold by a French company”); In re California Pizza
Kitchen, Inc., 10 USPQ2d 1704, 1706 (TTAB 1988) (“It is the
perception of the public as to the geographical
significance of the mark which controls whether
registration should be refused pursuant to section 2(e)(2),
not whether an applicant renders the service or
manufactures some of the goods outside of the geographical
area named in the mark”).
Applicant also cites several cases to support his
argument that the term “Missouri River” is not primarily
geographically descriptive of its utility and related
services. World Carpets, Inc. v. Dick Littrell’s New World
Carpets, 438 F.2d 482, 168 USPQ 609 (5th Cir. 1971) (WORLD);
In re Dixie Insurance Co., 213 USPQ 514 (TTAB 1984)
(DIXIE); In re John Harvey & Sons, Ltd., 32 USPQ2d 1451
Ser. No. 75/977,753
13
(TTAB 1993); In re Gale Hyman, Inc., 15 USPQ2d 1478 (TTAB
1990). These cases involve much more nebulous or broad
terms, which are not primarily geographic terms (“world”
and “Dixie”), a small English city (Bristol, England), or a
street (Sunset Boulevard). They do not indicate that the
name of a well-known river is not primarily geographically
descriptive of public utility services that receive
hydroelectric power for plants on the river.4 In this case,
inasmuch as applicant’s public utility services and the
related services of maintenance of utility distribution
lines and energy management services come from the Missouri
River, there is a services/place relationship.
Also, applicant’s citation of third-party
registrations does not establish that its mark is not
primarily geographically descriptive. The marks in most of
those cases are substantially different. Even if some of
the registrations supported applicant’s argument, the
“PTO’s allowance of such prior registrations does not bind
the Board or this court.” In re Nett Designs, 236 F.3d
1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). While
applicant also points to the publication of its other marks

4 In addition, applicant cites In re Yardley of London, Inc., 165
USPQ 272 (TTAB 1970). Unlike Yardley, the record establishes the
connection between the “Missouri River” and electrical power.
Ser. No. 75/977,753
14
for other services without a disclaimer of the term
“Missouri River,” those applications were intent-to-use
applications, and we do not know what the record was in
those files. In addition, they are for different services
that must be separately evaluated under the facts in the
record of each case. Loew’s Theatres, 226 USPQ at 869.
Finally, regarding the bill payment services, we are
reluctant to find that bill payment services are related to
public utility services based on the evidence in this case.
In Save Venice, the examining attorney established that
Venice was known for a wide variety of goods and services
(glass, lace, jewelry, textiles, printing and publishing)
and, therefore, additional products and services would also
be likely to come from Venice. In this case, there is no
evidence in the record that the Missouri River would be
associated with anything other than public utility and
energy-related services. We have no basis to conclude that
applicant’s bill payment services actually originate in or
near the Missouri River.
If applicant’s services do not actually come from the
geographical place named in the mark, the mark would not be
geographically descriptive. The question now becomes
whether the term “Missouri River” is geographically
descriptive of applicant’s bill payment services when
Ser. No. 75/977,753
15
applicant is headquartered in Sioux Falls, South Dakota,
which is not on the Missouri River.
Unlike the situation in which the Missouri River is
the source of hydroelectric power for public utility
services, the examining attorney did not establish that the
Missouri River is the source of bill payment services.
Also, there is no evidence that the term “Missouri River”
is a term that is applied to a defined region and that
applicant’s bill payment services originate in that region.
While we can speculate as to whether Missouri River is
geographically descriptive of applicant’s bill payment
services from Sioux Falls, South Dakota, ultimately we need
evidence to support our speculation. Simply noting that a
major river runs somewhere in the general area in which
applicant’s headquarters is located is not enough evidence
to demonstrate that the name of the river geographically
describes the region. Beyond applicant’s trade name, we
simply do not have the necessary evidence, and we decline
to resort to taking extensive judicial notice to fill in
any gaps in the record. Therefore, we find that the term
“Missouri River” is not primarily geographically
descriptive for bill payment services on the record before
us.

Ser. No. 75/977,753
16
DECISION: The requirement for a disclaimer of the
term MISSOURI RIVER ENERGY SERVICES apart from the mark as
shown, and the refusal to register in the absence of such
disclaimer, are affirmed for Classes 37, 39, and 42.
However, this refusal will be set aside if, within thirty
days of the date stamped on this decision, applicant files
with the Board a disclaimer, in proper standardized form,
of MISSOURI RIVER ENERGY SERVICES. See Trademark Rule
2.142(g). The requirement for a disclaimer of the term
“Missouri River” in Class 36 is reversed.
Ser. No. 75/977,753
17
Simms, Administrative Trademark Judge, concurring in part
and dissenting in part:

While I agree with the majority’s conclusion, albeit
for a different reason, that “Missouri River” is primarily
geographically descriptive of applicant’s public utility,
maintenance and energy management services, I believe the
majority should also have found that this term is primarily
geographically descriptive of applicant’s bill payment
services as well. My reasons follow.
First, the record of this case shows that applicant,
the Missouri Basin Municipal Power Agency, changed its name
and service mark to Missouri River Energy Services. An
April 1998 letter distributed by applicant stated:
After several months of careful consideration,
we are pleased to announce a new name for
Missouri Basin Municipal Power Agency. With the
dramatic changes occurring in our industry, we
decided the time was right to pursue a name,
which more accurately reflects both our history
and our future. We explored what we have been,
and what we are becoming. Effective May 1, we
will be doing business as Missouri River Energy
Services. [Emphasis in original]

In the face of this evidence, it is difficult to believe
applicant’s argument in its brief that “Missouri River” in
its name and mark would not be taken as an indicator of
geographic origin of applicant’s services, but would
instead connote only “greatness, strength, authority, and
influence.” Applicant’s own words indicate that “Missouri
Ser. No. 75/977,753
18
River” “accurately reflects both [applicant’s] history and
[its] future.”
Moreover, although not mentioned by the majority, I
believe that the design element in applicant’s mark (shown
below) also serves to reinforce the geographically
descriptive significance of these very prominent words in
its mark for all of the services rendered under the mark.
The image shown next to the words “Missouri River” can only
help emphasize the significance of these words in the mark.

The Court in Vittel, cited by the majority, indicated
that the Board was correct in saying:
[H]ere a refusal of registration is based on the
finding that a mark if primarily geographically
descriptive of the goods, that is, the goods
actually come from the geographical place
designated in the mark, the Examining Attorney
must submit evidence to establish a public
association of the goods with that place if, for
example, there exists a genuine issue raised that
the place named in the mark is so obscure or
remote that purchasers would fail to recognize
the term as indicating the geographical source of
the goods. . . . [Emphasis by Court.]

In other words, if the term we are dealing with has primary
geographic significance, then there is a presumption of a
Ser. No. 75/977,753
19
goods- or services/place association if applicant’s goods
or services come from the place named in the mark. The
public is likely to believe that the goods or services
originate in the place named in the mark where the term has
primary geographic significance (that is, the geographic
place is neither obscure nor remote and has no other
meanings). If, however, there is a question about whether
the term has primary geographic significance, or if the
geographic term is of a remote or obscure location, then
the Office must submit evidence to establish the goods- or
services/place association.
The term “Missouri River” in applicant’s mark is
clearly primarily geographical in nature, and the majority
has so found, stating that this well known river, over 2400
miles long and flowing through or bordering six states, has
strong geographic significance. It is the longest river in
the United States, passes through or near such cities as
Omaha, Kansas City and St. Louis, drains an area of over a
half million square miles, and is the main tributary of the
Mississippi River. Under the case law, which the majority
cites, there is, therefore, ordinarily a presumption of a
services/place association if applicant’s services
originate in the place named in the mark. Following this
Ser. No. 75/977,753
20
principle, I would conclude that the mark is unregistrable
for all of applicant’s services without a disclaimer.
However, while reciting the traditional Handler Fenton
Westerns test, approved by the Court in Vittel, the
majority fails to give any reason why the services/place
presumption is not being used in this case. Instead, after
concluding that “Missouri River” has primary geographic
significance and reciting the general rule about presuming
a services/place connection if the services come from the
place named in the mark, the majority immediately launches
into a discussion of the evidence in the file about a
services/place association. This is simply not understood.
Because all, or at least a substantial part, of applicant’s
services come from or are rendered near the Missouri River
or the Missouri River valley, we may make the presumption
of this services/place association.5 Then, it is
applicant’s burden to attempt to rebut this presumption.
Based on the evidence (rather than any presumption),
the majority has found a services/place association between
applicant’s public utility services and applicant’s

5 However, even if the presumption is not applied, the evidence
of record (that power plants are located along the Missouri
River, that applicant’s member utilities get most of their power
from the owner of these plants, and that applicant coordinates
the delivery of the members’ allocations) provides evidence that
the public would indeed make this association with all of
applicant’s services.
Ser. No. 75/977,753
21
maintenance of distribution lines and energy management
services (these services “come from the Missouri River,”
according to the majority). Yet, when applicant’s bill
payment services are considered, the majority faults the
Examining Attorney for not providing any evidence that the
term “Missouri River” is “applied to a defined region,”
and, unlike with respect to the other services, states that
these services do not come from or near the place named in
the mark. But applicant’s bill payment services, in large
part, do in fact come from or are rendered near the same
place as its other services—-either from or near the
Missouri River or the Missouri River valley. I simply do
not understand, if applicant’s maintenance of distribution
lines (obviously not all adjacent to the Missouri River,
but provided in the communities where the lines are
located) and energy engineering and technical consultation
services relating to the development, use, purchase and
conservation of energy can be said to “come from the
Missouri River,” why its bill payment services are for some
reason said to come from applicant’s headquarters in Sioux
Falls (about 50 miles away from the Missouri River itself),
or why the Examining Attorney must establish some “defined
region” (presumably a land area) called the Missouri River
Ser. No. 75/977,753
22
for these services. If a term names the source of
applicant’s public utility, maintenance of lines and
engineering and consultation services, then it is just as
likely in my view to be perceived as naming the source of
the related services involving the payment of customers’
utility bills.
In this regard, applicant’s specimens show that these
bill payment services are for the “automatic payment of
your Missouri River Energy Services bills [that] can save
you time, money, and more.” Applicant commenced use of its
mark for all of its services on the same day. And
applicant has disclaimed the words “Energy Services” for
all classes, including the bill payment services, admitting
that “Energy Services” in its mark merely describes its
bill payment services. Viewed in that light, the rationale
is simply not understood for finding these services too
unrelated to the remainder of applicant’s services to be
treated in a similar manner. Certainly, if the words
“Energy Services” merely describes applicant’s utility bill
payment services, then it is indeed difficult to understand
why these services are so unrelated to the public utility
services that one must look to see what evidence there is
of a services/place association, which approach I believe
Ser. No. 75/977,753
23
to be erroneous in any event under the circumstances of
this case.
One could reasonably ask, “Are these bill payment
services any more unrelated to applicant’s public utility
services than potpourri, lamps, bedding and residential
furniture are to lace, jewelry, glass, textiles, printing
involved in the Save Venice case, cited by the majority?”
See the following language, some of which is also noted by
the majority, from that case, involving the question of
geographic deceptive misdescriptiveness:
In the modern marketing context, geographic
regions that are noted for certain products or
services actively promote and adapt their
specialties to fit changing consumer needs.
Thus we see no reason to believe that a modern
merchant of Venice would not expand on the
traditional Venetian products listed by the
Board, to begin marketing products or services
related to such goods. Similarly, from the
consumer’s perspective, we also find no reason to
believe that the public strictly limits its
association of a place to the geographic region’s
traditional products or services. Because we
consider that consumers may assume that
geographic regions, like other commercial actors,
are likely to expand from their traditional goods
or services into related goods or services, we
hold that the registrability of a geographic mark
may be measured against the public’s association
of that region with both its traditional goods
and any related goods or services that the public
is likely to believe originate there. The
essence of the test is whether consumers are
likely to be confused by the source of the
related goods identified by a distinctive
geographic mark.

Ser. No. 75/977,753
24
In its application of the “related goods” test,
the Board found that many of applicant’s goods
“reflect product types, decorative themes and
material compositions” associated with the city
of Venice, Italy. As a result, the Board
concluded that consumers would make a goods/place
association between Venice, Italy and applicant’s
related goods. We agree with the Board that
certain derivative “related goods” carrying a
distinctive geographic mark would likely confuse
consumers as to the source of the “related
goods.”6

Moreover, it seems to me that the burden on an
Examining Attorney of showing a services/place association,
required by the majority, between bill payment services and
the Missouri River is an onerous one that cannot be met.
If one searches the Nexis database of news and magazine
stories to find “bill payment” discussed in any story that
also mentions the Missouri River, one retrieves absolutely
nothing, as one might expect.
Also, the majority’s statement that the names of
rivers and lakes are not always “interchangeable” with
their nearby land locations in not understood.
“Interchangeability” of rivers with nearby land locations

6 Unlike in geographic deceptive misdescriptiveness cases (like
Save Venice), however, where there must be evidence to establish
that there is an association between applicant’s goods or
services and the geographic place named in the mark because
applicant’s goods or services do not come from that place, no
such requirement is normally imposed in geographic
descriptiveness cases so long as the asserted mark has primary
geographic significance and the goods or services come from the
Ser. No. 75/977,753
25
is not the issue. The question is, are applicant’s
services likely to be associated by the relevant public
with the geographic place named in the mark. In my view,
if the area near a river or other body of water is the
location of significant commercial activity (as is the
Missouri River in this case), then I believe that the
public would inevitably make a goods- or services/place
association. Here, the river is presumed to be associated
with applicant’s services if applicant is performing those
services near the river, which it is. Only if there were a
lack of commercial activity in the region of a river or a
body of water would one not make such an association. See,
for example, In re Nantucket, Inc., 677 F.2d 95, 213 USPQ
889, 897 (CCPA 1982)(Nies, J., concurring)(use of “the
names of places devoid of commercial activity” is
considered “arbitrary”). By way of example, a mark such as
“Lake Tahoe Auto Repair” would be geographically
descriptive, in my opinion, but a similar generic term with
a remote, obscure or desolate body of water would not be.
Suffice it to say that this decision, as it relates to
applicant’s bill payment services and other services,
deviates from established precedent. I would affirm the

place named in the mark. I believe the majority has failed to
recognize this significant distinction.
Ser. No. 75/977,753
26
requirement for a disclaimer in all classes. Registration
should only be permitted without a disclaimer of the words
“Missouri River” when these words in the asserted mark have
acquired distinctiveness.