Oak Park Brewing Company, Inc.

Trademark Trial and Appeal Board

Feb 14, 2017

No. 86329948 (T.T.A.B. Feb. 14, 2017)

This Opinion is not a
Precedent of the TTAB
Mailed: February 14, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Oak Park Brewing Company, Inc.
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Serial No. 86329948
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Candace L. Moon and Lorie K. Mallari of The Craft Beer Attorney APC,
for Oak Park Brewing Company, Inc.
Brendan McCauley, Trademark Examining Attorney, Law Office 114,
K. Margaret Le, Managing Attorney.
_____

Before Zervas, Ritchie and Kuczma,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Oak Park Brewing Company, Inc. (“Applicant”) seeks registration on the
Principal Register of the following mark for “beer” in International Class 32:1

1 Application Serial No. 86329948 was filed on July 7, 2014, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based upon an allegation of a bona fide intention to use
the mark in commerce.
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The description of the mark entered into the record when Applicant filed its
application states,
The mark consists of “oak park” in large stylized lettering
above “Brewing Company” in smaller, stylized lettering,
above “Sacramento CA” in smaller, stylized lettering; “est.
2013” is in small lettering beneath the “K” of “park” and
surrounded by the leg of the letter “R” also in “park.”
Applicant disclaimed all of the wording in the mark in its initial application.
Before discussing the refusal and requirements in this appeal, we provide
highlights of the prosecution history.
On May 14, 2015, the Examining Attorney issued an Office Action which made
final a refusal to register the mark under Trademark Act Section 2(e)(2), 15 U.S.C.
§ 1052(e)(2), on the ground that the mark as a whole is geographically descriptive of
a neighborhood in Sacramento, California known as Oak Park. In addition, the
Examining Attorney advised that all of the wording in the mark may not be
disclaimed and that the terms BREWING COMPANY and EST. 2013 should be
disclaimed.
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On November 13, 2015, Applicant filed a notice of appeal and a request for
reconsideration, in which it sought to amend the drawing as follows:

In addition, Applicant indicated that that it “presently provides goods
manufactured, packaged, and shipped from its Sacramento, California location in
Oak Park” (in response to the Examining Attorney’s requirement regarding
information about the goods) and Applicant also entered the disclaimer “No claim is
made to the exclusive right to use ‘BREWING COMPANY’ and ‘EST. 2013’ apart from
the mark as shown.” Applicant submitted the following amendment to the description
of the mark, “The mark consists of ‘oak park’ in large stylized lettering above ‘Brewing
Company’ in smaller, stylized lettering; ‘est. 2013’ is in small lettering beneath the
‘K’ of ‘park’ and surrounded by the leg of the letter ‘R’ also in ‘park.’” However,
Applicant added:
If the Examiner is not inclined to accept Applicant’s
request to amend its mark to remove the “SACRAMENTO
CA” portion, Applicant amends the application to insert the
following description. This wording is above
“SACRAMENTO CA” in a smaller stylized lettering with a
dot between “SACRAMENTO” and “CA”. “Est. 2013” is in
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small stylized lettering beneath the letter “K” in “PARK”
and surrounded by the leg of the letter “R” also in “PARK.”2
We therefore construe Applicant’s amendments to its description of the mark
statement, and by extension to its mark, to be made in the alternative.
On December 2, 2015, the Examining Attorney issued a non-final Office Action
refusing to accept the amended drawing as a material alteration of the original mark,
and continuing the geographic descriptiveness refusal. In a June 2, 2016 response,
Applicant submitted additional evidence, argued against the geographic
descriptiveness refusal, and argued in favor of acceptance of the new drawing.
Applicant did not revise its amended description of its mark.
In the following second final Office Action dated June 23, 2016, the Examining
Attorney made final the geographic descriptiveness refusal, refused to accept the
amended drawing as a material alteration of the mark and required a description of
the mark that conforms with the originally-filed mark.
This application therefore comes up before us for decision on the following three
issues: (i) whether the proposed amended mark is a material alteration of the
originally filed mark; (ii) whether the description of the mark is appropriate; and (iii)
whether the mark is geographically descriptive under Section 2(e)(2) for Applicant’s
identified goods.

2 November 13, 2015 Resp., TSDR 6.
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Amendment of Drawing
Trademark Rule 2.72(b)(2), 37 C.F.R. § 2.72(b)(2), provides that in an application
based on a bona fide intention to use a mark in commerce under Section 1(b) of the
Act, an applicant may amend the drawing of the mark if “[t]he proposed amendment
does not materially alter the mark. The Office will determine whether a proposed
amendment materially alters a mark by comparing the proposed amendment with
the description or drawing of the mark filed with the original application.” The test
for determining whether a proposed amendment is a material alteration has been
articulated as follows:
The modified mark must contain what is the essence of the
original mark, and the new form must create the
impression of being essentially the same mark. The general
test of whether an alteration is material is whether the
mark would have to be republished after the alteration in
order to fairly present the mark for purposes of opposition.
If one mark is sufficiently different from another mark as
to require republication, it would be tantamount to a new
mark appropriate for a new application.
In re Hacot-Colombier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997),
quoting Visa Int’l Service Ass’n v. Life-Code Systems, Inc., 220 USPQ 740, 743-44
(TTAB 1983). The crucial questions are whether the proposed amendment retains
“the essence of the original mark” and whether it creates “the impression of being
essentially the same mark.” In re Who? Vision Systems, Inc., 57 USPQ2d 1211, 1218
(TTAB 2000). That is, “the new and old forms of the mark must create essentially the
same commercial impression.” Id., quoting In re Nationwide Industries Inc., 6
USPQ2d 1882, 1885 (TTAB 1988). See also In Re Guitar Straps Online, 103 USPQ2d
1745 (TTAB 2012).
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The record includes evidence that there are several geographic locations named
“Oak Park” in the United States. There is an “Oak Park” in Alabama; San Diego,
California; Tampa, Florida; Georgia; Chicago, Illinois; Indiana; Michigan; Minnesota;
North Dakota; Omaha, Nebraska; Portland, Oregon; Kansas; and Emeryville,
California.3 One “Oak Park” is particularly notable, Oak Park, Illinois, adjacent to
Chicago, Illinois:
Oak Park [Illinois] attracts architecture buffs and others
to view the many Frank Lloyd Wright designed homes
found in the village, alongside homes reflecting other
architectural styles. The largest collection of Wright-
designed residential properties in the world is in Oak Park.
A distinct focus on historic preservation of important
architectural styles began in the 1970s and continues, with
many buildings marked as historically significant, and so
far, three historic districts defined. Other attractions
include Ernest Hemingway’s birthplace home and his
boyhood home, the Ernest Hemingway Museum, the three
Oak Park homes of writer and Tarzan creator Edgar Rice
Burroughs, Wright’s Unity Temple, Pleasant Home, and
the Oak Park-River Forest Historical Society.4
We find that the removal of “SACRAMENTO . CA” changes the commercial
impression of the original mark in that it no longer refers to Oak Park of Sacramento,
California, but rather may refer to another Oak Park, including Oak Park, Illinois
with its collection of Frank Lloyd Wright buildings, historically significant buildings
and the Hemingway museum. For those who do not know the geographic
designations, the commercial impression of OAK PARK, without the designation
“SACRAMENTO . CA,” may be arbitrary, as a park dominated by oak trees.

3 www.dity-data.com, April 22, 2015 Resp., TSDR 6; June 2, 2016 Resp., TSDR 6-71.
4 https://en.wikipedia.org/wiki/Oak_Park,_Illinois. June 2, 2016 Resp., TSDR 7-12.
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Thus, Applicant’s attempt to amend the drawing would result in material
alterations to the proposed mark, as originally filed, and is prohibited under
Trademark Rule 2.72. The Examining Attorney’s rejection of the alternative drawing
is affirmed.
Requirement for an acceptable description of the mark
TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 808.02 (Jan. 2017)
provides that “[i]f a description of a mark is placed in the record, the description
should state clearly and accurately what the mark comprises, and should not create
a misleading impression by either positive statement or omission.” In addition, “[t]he
description should describe all significant aspects of the mark, including both literal
elements and design elements. Insignificant features need not be included in a
description.” Id. Further, “[g]enerally, amending the description of the mark is
liberally permitted, so long as the drawing supports the description. In rare cases
where the amendment of the description constitutes a material alteration of the mark
on the drawing or of the description filed with the original application, amendment
will not be permitted.” TMEP § 808.03(e).
Because the designation “SACRAMENTO . CA” contributes to the commercial
impression of the mark, it is a significant aspect of the mark. Therefore, the amended
description of the mark is not appropriate. The Examining Attorney’s rejection of the
alternative description of the mark is also affirmed.
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Geographic Descriptiveness
The test for determining whether a term is primarily geographically descriptive
is whether:
1) the mark sought to be registered (or a portion thereof) is
the name of a place generally known to the public,
2) the public would make an association between the goods
or services and the place named in the mark, that is,
believe that the goods or services for which the mark is
sought to be registered originate in that place, and
3) the source of the goods or services is the geographic
region named in the mark.
In re Newbridge Cutlery Co., 776 F.3d 854, 113 USPQ2d 1445, 1448 (Fed. Cir. 2015).
See also, In re Societe Generale des Eaux Minerals de Vittel S.A., 824 F.2d 957, 3
USPQ2d 1450 (Fed. Cir. 1987). The relevant public is the purchasing public in the
United States of the types of goods or services identified in the application. In re
Newbridge Cutlery, 113 USPQ2d at 1449. The Federal Circuit explained,
Regarding the first prong of the test, that the population of
the location is sizable and/or that members of the
consuming public have ties to the location … is evidence
that a location is generally known. By contrast, that the
geographic meaning of a location is “minor, obscure [or]
remote” indicates that the location is not generally known.
… Of course, there are many probative factors to the
question of whether a location is generally known … .
Id.
Turing to the first prong of the test for geographic descriptiveness, the Examining
Attorney submitted the evidence including the following to demonstrate that Oak
Park of Sacramento is a generally known geographic location:
● a Wikipedia web page about Oak Park stating,
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“Oak Park is informally bounded by U.S. Route 50 to
the North, Stockton Blvd. to the East, CA-99 to the
West and Fruitridge Road to the South. It is situated
within the city limits and provides easy access to the
ever growing/changing Downtown of Sacramento.
The streets intersect with avenues and there is one
main street that runs through all of Oak Park,
Martin Luther King Jr. Boulevard, formerly known
as Sacramento Boulevard.”
“As of 2008 Oak Park faces a variety of challenges
sustaining the beginnings of its comeback due in
part to an increase in foreclosures and an area wide
decline in property values. Its future is in the hands
of activists like Kevin Johnson, community groups
like the Oak Park Neighborhood Association, the
South Oak Park Community Association (SOPCA)
established in 2014. Community policing efforts, the
demand for affordable housing close to the
University of California Davis Medical Center and
the overall impact that the real estate market will
play in the future.”5
● Newsreview.com article titled “Oak Park’s new kicks: On
the neighborhood’s latest revitalization effort [-] Millions of
investment dollars, new housing, restaurants, even a
brewery will arrive in the troubled neighborhood. Can Oak
Park escape its ‘ghetto’ stigma?” stating,
“A cadre of entrepreneurially minded locals is
working to help Oak Park ascend from the ashes as
the neglected and sketchy cousin of Curtis Park and
Land Park into a hub of urban life and culture.”
“This was the state of Oak Park for decades – a once
heralded enclave of affluence and social activism
slowly declined into a forest of foreclosed homes,
shuttered businesses and vacant lots after a mass
exodus in the 1960s, when many of the well-heeled
class sought residence in inexpensive suburban tract
homes.”

5 http://en.wikipedia.org/wiki/Oak_Park,_Sacramento,_California, Oct. 23, 2014 Office
Action, TSDR 2-4.
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“It was more than 150 years ago that Oak Park
emerged as the first suburb of Sacramento. The
neighborhood, which is broken into two sections,
north and south Oak Park, today houses a combined
10,842 people. It was originally developed with an
elaborate and distinct architectural style of
Victorian, Craftsman and cozy bungalow homes.”
“Today, Oak Park is still trying to shake off the
stigma of poverty and crime.”6
● Merriam Webster entry for Sacramento California
indicating that the population of Sacramento in 2000 was
407,018.7
● Web pages containing information from the Oak Park
Neighborhood Association including the history of this
location, stating,
“As the blight of vacant and dilapidated buildings
increased, so did crime. Prostitution, drugs and gang
activity moved into the most stressed areas. Crime
is usually associated with a high percentage of home
rentals. As of the 2000 U.S. Census, 35 percent of
Oak Park’s housing units were owner occupied. That
compares with a rate of 50 percent across the City of
Sacramento, 58 percent in the county and 57 percent
statewide.”
“As a response to the blight problems, the
Sacramento Redevelopment Agency began buying
up properties in the Oak Parle business district. A
good number of the old original buildings were
demolished and some of these properties were
turned into public housing projects. However, there
still remain a good number of vacant business
properties and vacant lots, principally along
Broadway.”
“Jobs are returning to the Oak Park Vicinity. The
UC Davis Hospital continues to expand and the
Shriner’s Hospital has opened. Related businesses

6 Oct. 23, 2014 Office Action, TSDR 15.
7 Oct. 23, 2014 Office Action, TSDR 5.
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and offices have sprung up along Stockton
Boulevard and service businesses have followed.
Decrepit motels have been turned into refurbished
apartment buildings and business buildings have
become preservation and tax act projects.”8
The Examining Attorney also submitted a handful of complete news articles and
excerpts from 888 news stories which contain the term Oak Park in relation to
Sacramento, California. Several, but not many, of these excerpts are from major
newspapers such as the New York Times. Many of these excerpts are from local
newspapers.9 At best, these stories reflect that a former mayor of Sacramento, who
played in the National Basketball Association, grew up in Oak Park of Sacramento.
Applicant, in turn, submitted inter alia three, live, use-based registrations which
include the term Oak Park. A fourth registration includes a disclaimer of the term
Oak Park.10 These registrations have limited probative value because prior
registrations are not binding on Board determinations as the USPTO must examine
each application on its own merits based on the record in the application under
consideration, and the Board is not bound by the decisions of other examining
attorneys in other applications. See In re Cordua Restaurants, Inc., 823 F.3d 594, 118
USPQ2d 1632, 1635 (Fed. Cir. 2016) (“The PTO is required to examine all trademark

8 Oct. 23, 2014 Office Action, TSDR 19-20.
9 The following, taken from the Whittier Daily News (July 5, 2010) is typical; “House explodes
in Oak Park Sacramento – at least one firefighter is in the hospital after a vacant house
exploded in a Sacramento neighborhood, possibly because of a gas leak.” May 14, 2015 Office
Action, TSDR 1.
10 A fifth registration including the term Oak Park has been canceled; we do not consider this
cancelled registration. See In re Hartz Hotel Services Inc., 102 USPQ2d 1150, 1152 n.5 (TTAB
2012) (Board did not consider four cancelled third-party registrations submitted by
applicant); TBMP § 1208.02 (Jan. 2017).
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applications for compliance with each and every eligibility requirement . . . .”); In re
Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if
some prior registrations had some characteristics similar to Nett Designs’
application, the PTO’s allowance of such prior registrations does not bind the Board
or this court”).
When we consider the evidence as a whole, we are not persuaded that “Oak Park”
identifies a geographic location “known generally to the American purchasing public”
of beer. See In re Newbridge Cutlery, 113 USPQ2d at 1450 (“That Newbridge is the
second largest town in County Kildare and the seventeenth largest in the Republic of
Ireland reveals nothing about what the relevant American purchaser might perceive
the word ‘Newbridge’ to mean and is too insignificant to show that Newbridge is a
place known generally to the American purchasing public”). Rather, we find that Oak
Park in Sacramento is minor and obscure, and as such it is not a generally known
geographic location. The impression created by the evidence as a whole is that Oak
Park in Sacramento, with one main street, was at one point an important suburb of
Sacramento, which fell into decline with gang activity, crime, prostitution and illicit
drugs, but is now attempting a revival. While Sacramento, California is not an
insignificant city, with a population of approximately 400,000, there is nothing to
indicate that the specific area of Oak Park has any significance outside of
Sacramento, California. At best, the record indicates that one professional basketball
player grew up there, a fact probably not generally known to the American beer-
drinking public.
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In In re Societe Generale des Eaux Minerales de Vittel S.A., 3 USPQ2d at 1452,
the Federal Circuit stated:
There can be no doubt that the PTO has established that
Vittel is in fact the name of a small town in the Voges
mountain region of France where there is a resort with
mineral springs - a spa - where the water is bottled and
thence distributed somewhere, but how many people in
this country know that? Certainly Vittel is remote and we
deem the evidence produced by the PTO insufficient to
show that it is not obscure. We think the evidence is
inadequate to show that the bulk of cosmetics purchasers,
or even a significant portion of them, would upon seeing
the word Vittel on a bottle of skin lotion or the like,
conclude that it is a place name and that the lotion came
from there, rather than simply a trademark or trade name
of a manufacturer like Chanel, Bourgois, or Vuitton.
See also, In re Bavaria St. Pauli Brauerei AG, 222 USPQ 926, 927-28 (TTAB 1984)
(“JEVER” and design for “beer” produced in the German town of Jever has an obscure
geographical meaning and is not primarily geographically descriptive), In re Brauerei
Aying Franz Inselkammer KG, 217 USPQ 73, 75 (TTAB 1983) (“AYINGER,” in
“AYINGER BIER” (“BIER” disclaimed) for “beer” produced in the German town of
Aying, has a minor, remote or obscure geographical significance and not is primarily
geographically descriptive).
Because the Examining Attorney has failed to prove the first prong of the test for
geographic descriptiveness, the Section 2(e)(2) refusal to register cannot stand and is
reversed.
Decision: The refusal to register Applicant’s mark under Section 2(e)(2) is
reversed. The refusal to accept the proposed alternative drawing because it is a
Serial No. 86329948
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material alteration of the original drawing is affirmed, as is the refusal to accept the
proposed alternative description of the mark.
The application will move forward to the intent-to-use division of the Office to
await the filing of a Statement of Use for the mark as originally filed by Applicant,
with its original description of the mark.