Mitchell E. Peck

Trademark Trial and Appeal Board

Dec 17, 1998

No. 74716067 (T.T.A.B. Dec. 17, 1998)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB DEC. 17, 98
Hearing: Paper No. 11
April 9, 1998 PTH
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Mitchell E. Peck
________
Serial No. 74/716,067
_______
Auzville Jackson, Jr. for Mitchell E. Peck.
Darlene Bullock, Trademark Examining Attorney, Law Office
101 (R. Ellsworth Williams, Managing Attorney).
_______
Before Simms, Cissel and Hairston, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
Mitchell E. Peck has filed an application to register
MEXICAN WATER for bottled drinking water.1 Registration has
been finally refused pursuant to Section 2(e)(3) of the
Trademark Act, 15 U.S.C. 1052(e)(3), on the ground that
applicant’s mark is primarily geographically deceptively
misdescriptive of these goods.
Ser No. 74/716,067
2
Applicant and the Examining Attorney have submitted
briefs and an oral hearing was held before this Board.
In order to establish that a mark is primarily
geographically deceptively misdescriptive, the Examining
Attorney must show that the mark consists of or
incorporates a term that denotes a geographical location
which is neither obscure or remote, that there is a
goods/place association between the goods on which the mark
is (or will be) used and the geographical place named by
the term, and that the goods do not, in fact, originate in
that geographical place. See In re Jacques Bernier Inc.,
894 F.2d 389, 13 USPQ2d 1725 (Fed. Cir. 1990) and In re
Loew’s Theaters, Inc., 769 F.2d 764, 226 USPQ 865 (Fed.
Cir. 1985).
In this case, applicant has admitted that its bottled
drinking water will originate in the United States. Also,
there is no question that Mexico is a well-known
geographical place. Further, the Examining Attorney
submitted an excerpt from Webster’s II New Riverside
University Dictionary (1984) wherein “Mexican” is defined
as: “Of or relating to Mexico or to its inhabitants, their
language, or their culture.” The question then is whether

1 Application Serial No. 74/716,067, filed July 18, 1995,
alleging a bona fide intention to use the mark in commerce.
Ser No. 74/716,067
3
there is a goods/place association between bottled drinking
water and Mexico, that is, whether the public would be
likely to believe that bottled drinking water originates in
Mexico. In support of her position that there is a
goods/place association, the Examining Attorney submitted
excerpts of stories from the NEXIS data base which
demonstrate that bottled water is produced in Mexico.
Examples are set forth below:
Did you hear the one about the Mexican
bottled water? It’s bottled water from
Mexico. Get it? Bottled Mexican water.
Sorry, senor, there is no punchline.
Instead, there is Penafiel, a line of
packaged hydros from South of the Border
that makes perfect sense to Mexican
expatriates living in the US. It might
also provide liquid refreshment to
other Americans. (Beverage World,
November 30, 1995);
. . . 70 percent of GEMEX’s sales now
come from Pepsi brands and the bottler’s
Electropura processed water and Garci
Crespo mineral water make it Mexico’s
leading bottled water producer. (The
Reuter Business Report, July 27, 1995);
Bonafont, which holds a 25 percent share
of the nonreturnable section of Mexico’s
growing bottled water market, has seen
sales increase 10 percent this year
compared with the first half of 1995.
(Plastics News, July 15, 1996); and
The proceeds will fund an acquisition of
a facility in Mexico which will produce
bottled water and juice. (Private
Placement Reporter, July 29, 1996).
Ser No. 74/716,067
4
In view of the foregoing, we find that the Examining
Attorney has established a prima facie case that the public
would make a goods/place association, that is, that the
public would be likely to believe that bottled drinking
water sold under the asserted mark MEXICAN WATER does
originate in Mexico. Competitors located in Mexico who
produce bottled drinking water which originates in Mexico
should be free to label their goods as “Mexican water.”
Applicant maintains that purchasers will not be misled
as to the origin of its bottled drinking water because the
labels used thereon will bear a statement that the water
originates in the United States. Also, applicant contends
that:
It is well known that in some foreign
countries, including many parts of Mexico,
to drink untreated water creates the risk
of intestinal upsets and other maladies.
One popular expression refers to this as
Montezuma’s Revenge which applies to the
general problems of unsafe drinking water
whether in the area Montezuma
reigned as Emperor or other areas.
Thus, no reasonable person in the United
States would associate MEXICAN WATER as
bottled drinking water originating in
Mexico and would not buy it for that
reason.
(Brief, p. 3).
We recognize that many people in the United States are
aware that drinking the tap water in many foreign
Ser No. 74/716,067
5
countries, including Mexico, may be ill-advised. However,
this does not mean that unpolluted or purified water does
not exist in these countries, including Mexico.
Finally, applicant’s contention that purchasers will
not be misled as to the origin of the goods because the
labels used thereon will bear a statement that the water
originates in the United States is not persuasive.
Explanatory statements on labels which purchasers may or
may not note may not be used to negate misdescriptiveness.
See In re Budge Manufacturing Co., Inc., 857 F.2d 773, 8
USPQ2d 1259, 1261 (Fed. Cir. 1988).
In sum, we find that purchasers and prospective
purchasers encountering the asserted mark MEXICAN WATER for
bottled drinking water are likely to believe, mistakenly as
it turns out, that the goods have their origin in Mexico.
Ser No. 74/716,067
6
Decision: The refusal to register is affirmed.
R. L. Simms
R. F. Cissel
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial and
Appeal Board
Ser No. 74/716,067
7