PBM Products, LLC

Trademark Trial and Appeal Board

Mar 5, 2013

No. 77368754re (T.T.A.B. Mar. 5, 2013)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: March 5, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re PBM Products, LLC
________

Serial Nos. 77368754 & 77385593
_______

On Request for Reconsideration
_______

Theodore A. Breiner of Breiner & Breiner LLC for PBM
Products, L.L.C.

Simon Teng, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Cataldo, Wellington and Shaw,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, PBM Products, LLC, filed applications to
register on the Principal Register the following marks:
VERMONT ORGANICS (standard characters);1 and

1 Application Serial No. 77368754 was filed January 10, 2008,
based upon applicant’s allegation of its bona fide intent to use
the mark in commerce. During prosecution, applicant filed an
amendment to allege use, asserting first use and first use in
commerce as of April 2008.
Ser. Nos. 77368754 and 77385593
2
2
both for “infant formula having organic ingredients” in
International Class 5.
The trademark examining attorney refused registration
of application Serial No. 77368754 under Section 2(e)(2) of
the Trademark Act, 15 U.S.C. § 1052(e)(2), on the basis
that VERMONT ORGANICS is primarily geographically
descriptive of applicant’s goods. The examining attorney
refused registration of application Serial No. 77385593
absent a disclaimer of “VERMONT ORGANICS” under Section
6(a) of the Trademark Act, 15 U.S.C. § 1056, on the basis
that VERMONT ORGANICS is primarily geographically
descriptive of applicant’s goods.
On April 30, 2012, applicant filed a request for
reconsideration of the Board’s March 29, 2012 decision
affirming the examining attorney’s refusal of registration

2 Application Serial No. 77385593 was filed January 31, 2008,
based upon applicant’s allegation of its bona fide intent to use
the mark in commerce. During prosecution, applicant filed an
amendment to allege use, asserting first use and first use in
commerce as of April 2008. “Color is not claimed as a feature of
the mark.” “The mark consists of the wording ‘VERMONT ORGANICS’
and a maple leaf design against a rectangular background.”

Ser. Nos. 77368754 and 77385593
3
of both of its applied-for marks on the ground that VERMONT
ORGANICS is primarily geographically descriptive of the
recited goods.
As a preliminary matter, we note that applicant’s
request for reconsideration is timely inasmuch as it was
filed within 30 days of the date of the Board’s decision.
See Trademark Rules 2.144 and 2.196. See also Avedis
Zildjian Co. v. D. H. Baldwin Co., 181 USPQ 736 (Comm’r
1974).
Generally, the premise underlying a motion for
reconsideration, modification or clarification under
Trademark Rule 2.127(b) is that, based on the facts before
it and the prevailing authorities, the Board erred in
reaching the order or decision it issued. Such a motion
may not properly be used to introduce additional evidence,
nor should it be devoted simply to a reargument of the
points presented in a brief on the original motion.
Rather, the motion normally should be limited to a
demonstration that, based on the facts before it and the
applicable law, the Board’s ruling is in error and requires
appropriate change. See TBMP § 543 (October 2012) and
authorities cited therein.
Applicant asserts in its request for reconsideration
that the Board committed a number of errors in affirming
Ser. Nos. 77368754 and 77385593
4
the examining attorney’s refusals to register. Each will
be addressed in turn.
(1) the Board improperly found a presumption of a
goods/place association between Vermont and
infant formula having organic ingredients
("infant formula") contrary to the Federal
Circuit precedent in In re Nantucket, Inc., 677
F.2d 95 (CCPA 1982) ("Nantucket") and its
progeny, In re Societe Generale Des Eaux
Minerales De Vittel S.A., 824 F.2d 956 (Fed. Cir
1987) ("Vittel"). There is no such presumption
under the Board's reviewing Court's authority as
set forth in Nantucket;

(2) the Board’s Decision relying on, inter alia,
In re Handler Fenton Westerns, Inc., 214 USPQ 848
(TTAB 1982) ("Handler") is contrary to the
Federal Circuit precedent in Nantucket and Vittel
which the Board must follow;

(3) the Board incorrectly found that there is a
goods/place association between the State of
Vermont and infant formula because Vermont is
allegedly known for "organic foodstuffs."
Applicant's goods are not "organic foodstuffs"
but are infant formula. Proof of a goods/place
association required under the Federal Circuit
precedent in Nantucket does not allow the Board
to extend the "association" to "goods" not
applied for, and the Board cites no supporting
precedent for this holding;

(4) the Board incorrectly did not consider the
prior allowed registrations and applications for
the trademarks VERMONT NATURALS for vitamins;
MALIBU ORGANICS for nutritional supplements;
BOULDER ORGANICS for dietary supplements; and
ARIZONA for iced tea. While not dispositive,
each of these allowed trademarks is probative
evidence of what is not a primarily
geographically descriptive trademark. The fact
the VERMONT NATURALS registration has expired or
the applicants did not file statements of use for
the MALIBU ORGANICS and BOULDER ORGANICS
trademarks is irrelevant. The Trademark Office
Ser. Nos. 77368754 and 77385593
5
allowed this registration and these applications
under §2(e)(2) of the Trademark Act, the same law
that is being applied in this application. The
Board does not address the trademark ARIZONA for
iced tea which is currently registered and
directly on point; and

(5) the Board fails to consider the precedent
cited by applicant, including the decision in In
re International Minerals & Chemicals Corp., 147
USPQ 262 (TTAB 1965) wherein this Board held that
the trademark KENTUCKY TURF for fertilizer is not
primarily geographically descriptive under
§2(e)(2) of the Trademark Act. This case is
directly on point herein. The Board precedent
and Federal Circuit precedent is properly
considered in determining what is primarily
geographically descriptive.3

We turn to applicant’s first and second bases for its
request for reconsideration inasmuch as they are related.
Applicant’s apparent position is the decisions by the
predecessor of our primary reviewing court in Nantucket and
the Federal Circuit in Vittel prohibit the TMEO and this
tribunal from making a presumption of a goods/place
association in our determination of the geographic
descriptiveness of the term VERMONT ORGANICS. However,
applicant’s reliance upon these decisions is misplaced. As
we observed in In re Handler Fenton Westerns, Inc., 214 USPQ
848 (TTAB 1982), issued in the wake of Nantucket,
Having set out in some detail what the Court
required in Nantucket to support a refusal to
register under Section 2(e)(2), we want to take
care to distinguish the facts of Nantucket from
those presented here. While the refusal to
register in this case was, as in Nantucket, under

3 Request for reconsideration, p. 2-4.
Ser. Nos. 77368754 and 77385593
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Section 2(e)(2), the present applicant's mark has
been held primarily geographically descriptive,
rather than primarily geographically deceptively
misdescriptive, of the shirts to which the mark
is applied. Nantucket gave no specific guidance
as to how a goods-place association may be
established with respect to marks held primarily
geographically descriptive.

Id. at 849. Thus, the Board found that where
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 own
goods come from the geographical place named in
the mark.

Id. at 850. We recognize that applicant disagrees with
this determination and argues that it should be overruled.4
However, we are not persuaded by applicant’s arguments that
Handler or its progeny are in error.
Vittel is equally unhelpful to applicant because it
turned on whether the record showed that the town of Vittel
was sufficiently well-known to American consumers, or was
known for its health spas and mineral waters. Vittel, 3
USPQ2d 1453 (“In short, the evidence is insufficient to
show the likelihood of [] the public thinking that Vittel
refers to a place where the goods come from.”) Here, the
State of Vermont, unlike the small town of Vittel, cannot

4 Request for reconsideration, p. 8.
Ser. Nos. 77368754 and 77385593
7
seriously be considered obscure, and the record shows that
it is known for food products.
Turning to applicant’s third basis for its request for
reconsideration, we again note that our precedent in
Handler allows us to make a goods/place association between
Vermont and applicant’s goods due to the examining
attorney’s showing that Vermont is a place known generally
to the public and that applicant’s goods will originate
therefrom. We further note that the evidence made of
record by the examining attorney suggesting that Vermont is
a source for numerous organic foodstuffs including dairy
products and baby food, tends to reinforce the presumption
of an association between applicant’s goods and Vermont.
Turning to applicant’s fourth and fifth bases for its
request for reconsideration, it is applicant’s position
that the Board erred by not considering as “probative
evidence”5 cancelled Registration No. 2813938 for VERMONT
NATURALS for “vitamins, dietary supplements;” abandoned
applications for MALIBU ORGANICS for “nutritional
supplements” and BOULDER ORGANICS for “dietary
supplements;” and ARIZONA for “iced tea.” As we noted in
our March 29, 2012 determination, cancelled registrations
and abandoned applications have no probative value. See

5 Request for reconsideration, p. 3.
Ser. Nos. 77368754 and 77385593
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Action Temporary Services Inc. v. Labor Force Inc., 870
F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989); and
Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d
1463 (TTAB 2003). Similarly, with regard to the Board’s
decision in In re International Minerals & Chemicals Corp.,
147 USPQ 262 (TTAB 1965), a determination that an unrelated
mark (KENTUCKY TURF) for wholly unrelated goods, namely,
fertilizer, is not primarily geographically descriptive does
not compel a different result in this case. Even if we were
to consider all of the above applications and registrations,
we are not privy to the prosecution histories thereof and
cannot determine the basis for the decision to allow these
marks to registration. Finally, because all of the marks
and goods in those applications and registrations are
unrelated to those at issue herein, any evidence regarding
their approval for registration would have little, if any,
probative value herein. As is often noted by the Board and
the Courts, each case must be decided on its own merits.
See, for example, In re Nett Designs Inc., 236 F.3d 1339,
57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
In summary, we find that applicant points to no error
in our March 29, 2012 determination, but rather disagrees
with the result reached therein and otherwise presents
reargument of points previously raised in support of the
positions articulated in its briefs on appeal. As a
result, we remain of the opinion that our determination
Ser. Nos. 77368754 and 77385593
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affirming the examining attorney’s refusal to register is
correct.
The request for reconsideration is denied.