Old European Brewing Co.

Trademark Trial and Appeal Board

Aug 29, 2003

No. 75853926 (T.T.A.B. Aug. 29, 2003)

Mailed:
8/29/03
Paper No.14
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Old European Brewing Company
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Serial No. 75/853,926
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Peter H. Kahn of Luce, Forward, Hamilton & Scripps for Old
European Brewing Company.
Susan Leslie DuBois, Trademark Examining Attorney, Law
Office 111 (Craig Taylor, Managing Attorney).
_______
Before Cissel, Walters and Drost, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On November 19, 1999, applicant, a California
corporation, filed the above-identified application to
register the mark “NEDERLAND” on the Principal Register for
“beer,” in Class 32. The basis for filing the application
was applicant’s assertion that it possessed a bona fide
intention to use the mark in commerce for these goods.
The Examining Attorney refused registration under
Section 2(e)(3) of the Lanham Act, 15 U.S.C. Section
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 75/853,926
2
1052(e)(3), on the ground that the proposed mark is
primarily geographically deceptively misdescriptive of the
goods specified in the application. She noted that
“NEDERLAND” is the Dutch word for “Netherlands,” and that
the Netherlands is well known for the beers that are
produced there and exported to the United States. She
reasoned that because the primary significance of the term
sought to the registered is geographic and applicant’s
goods will not come from the place named by the mark, the
mark is geographically deceptively misdescriptive because
the public would believe that applicant’s beer originates
in the Netherlands.
Applicant responded to the refusal to register with
argument that “NEDERLAND” is not geographically deceptively
misdescriptive because the primary significance of the term
is not geographical and there is no goods/place association
between the mark and the goods. Included with its response
was a copy of a definition from Merriam-Webster’s
Collegiate Dictionary for the word “Netherlands.” The
dictionary notes that the term is used as a geographical
name for (1) “low countries—an historical usage”; and (2)
“or Holland… or Dutch Ne-der-land… country NW Europe on
North Sea; a kingdom, official capital Amsterdam, de facto
capital The Hague area 16,033 square miles… population
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15,009,000.” Applicant argued that the primary
significance of the term it seeks to register is not
related to the Netherlands because the term has several
meanings, including the name of the city in Southwest Texas
between Beaumont and Port Arthur, the name of the city in
Colorado, and as a designation for “low countries,” as
indicated in the dictionary definition applicant supplied.
The Examining Attorney was not persuaded by
applicant’s argument and, in her second Office Action, she
continued and made final the refusal to register based on
Section 2(e)(3) of the Act. Submitted as additional
support for the refusal were copies of several pages from
Michael Jackson’s Beer Companion showing that the
Netherlands is well known for the beer that is produced
there. Additionally, the Examining Attorney attached pages
from Internet listings showing that the Netherlands is an
established beer-producing country with a number of well-
known breweries. She argued that this evidence establishes
that the public would believe that the goods identified by
the mark “NEDERLAND” originate there. Additionally, she
made of record a copy of an entry from a reference work
published in the United States, Merriam-Webster’s
Geographical Dictionary, Third Edition, which lists
“Nederland” as “Kingdom, W Europe. See NETHERLANDS.” The
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second listing under the term refers to the Texas city
mentioned by applicant in response to the refusal to
register.
Applicant responded to the final refusal with more
argument and the statement that its beer will be brewed in
the Netherlands. Accordingly, argued applicant, the mark
could not be geographically deceptively misdescriptive.
The Examining Attorney then refused registration under
Section 2(e)(2) of the Act on the ground that the mark is
primarily geographically descriptive of the goods specified
in the application because the primary significance of the
mark is geographic and the goods will come from that
geographic location.
Applicant responded to the refusal to register under
Section 2(e)(2) the Act with argument centered around its
earlier contention that the primary significance of
“NEDERLAND” is not geographic. Examining Attorney was
still not persuaded by this argument, and the refusal to
register under Section 2(e)(2) the Act was made final.
Additional evidence was submitted in support of her
contention that beer purchasers would make an association
between beer and the place named by the mark.
Applicant timely filed a Notice of Appeal, followed by
its appeal brief. The Examining Attorney filed her brief
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on appeal and applicant filed a reply brief, but applicant
did not request an oral hearing before the Board.
The sole issue presented by this appeal is whether
Section 2(e)(2) the Lanham Act precludes registration of
“NEDERLAND” for beer.
The test for registrability under this section of the
statute is not disputed by applicant or the Examining
Attorney. Registration of a mark must be refused because
the mark is primarily geographically descriptive of the
goods if (1) the primary significance of the mark to the
purchasing public is geographic; (2) the public would make
a goods/place association, i.e., would believe that goods
of the type specified in the application originate in that
place; and (3) applicant’s goods actually are produced in
the place named in the mark. In re California Pizza
Kitchen, Inc., 10 USPQ2d 1704 (TTAB 1988).
We hold that the evidence made of record by the
Examining Attorney satisfies the requirements of this test.
The geographic dictionary published in the United States
demonstrates that the primary significance of “NEDERLAND”
in this country is geographic, i.e., that it is synonymous
with “the Netherlands.” The other evidence submitted by
the Examining Attorney establishes that the Netherlands is
well known as a source of beer. From this evidence we can
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conclude that beer purchasers in this country would
associate beer with “NEDERLAND.” In that applicant admits
that its beer will be produced there, the third prong of
the test for geographic descriptiveness is plainly
satisfied.
Applicant’s arguments to the contrary are not well
taken. Applicant contends that because only one exhibit
shows that “Nederland” is understood in the United States
to be synonymous with “the Netherlands,” the Examining
Attorney has somehow failed to meet her burden of proof.
This argument is not well taken. The Examining Attorney
made a prima facie showing that the primary significance of
the term sought to be registered is geographic, and
applicant introduced no evidence to rebut this showing.
While the evidence of record also shows that two relatively
obscure cities in Colorado and Texas are also called
“Nederland,” the first listing in the geographical
dictionary as a reference to the country establishes to our
satisfaction that the primary significance of this name to
most Americans will be that of the well known country in
Europe.
In its reply brief, applicant makes the curious
argument that because the evidence establishing the primary
significance of the term sought to be registered was
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submitted by the Examining Attorney in support of the
refusal to register under Section 2(e)(3) of the Act, this
evidence cannot be relied upon as support for the refusal
to register under Section 2(e)(2) of the Act, to which the
Examining Attorney switched when applicant finally admitted
that the beer on which it intends to use the mark will be
produced in the country named by the mark. This argument
is not well taken. The evidence submitted by the Examining
Attorney was properly made of record in support of the
proposition that the primary significance of the mark is
geographic. As noted above, it is unrebutted support for
that proposition. That this fact is a necessary element of
proof for the alternative refusals the Examining Attorney
made as the applicant fleshed out its intentions in this
case does not change the nature of this evidence, nor does
it somehow restrict it to establishing a basis for only the
first refusal to register, which applicant made
inapplicable when it admitted that its products would, in
fact, be produced in the Netherlands.
Because the Examining Attorney has met her burden of
proof and applicant has provided no evidence effectively
rebutting the prima facie case established by the Examining
Attorney that applicant’s mark is primarily geographically
descriptive, the refusal to register is well taken.
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DECISION: The refusal to register under Section
2(e)(2) of the Lanham Act is affirmed.