PBM Products, LLC

Trademark Trial and Appeal Board

Mar 29, 2012

No. 77368754 (T.T.A.B. Mar. 29, 2012)

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

Hearing: January 17, 2012 Mailed: March 29, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re PBM Products, LLC
________

Serial Nos. 77368754 & 773855931
_______

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).2
_______

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);3 and

1 Applicant’s December 17, 2010 motion to consolidate its appeals
of the refusals to register these applications was granted in a
Board order issued on January 7, 2011.
2 The above applications originally were examined by another
examining attorney, but subsequently were reassigned to the
attorney whose name is shown to prepare the appeal briefs.
3 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
4
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.
When the refusals were made final, applicant appealed.
Applicant and the examining attorney filed briefs,
including applicant’s reply briefs. In addition, applicant

4 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
and the examining attorney presented arguments in an oral
hearing held before this panel on January 17, 2012.
Because the matter on appeal in both applications is based
upon common issues of law and fact, and further because the
evidence of record and briefs are nearly identical, we will
decide both appeals herein.5
The test for determining whether a mark is primarily
geographically descriptive is whether (1) the mark (or a
portion thereof) is the name of a place known generally to
the public, and (2) the public would make a goods/place
association, that is, believe that the goods identified in
the application originate in that place. See In re Societe
Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 3
USPQ2d 1450 (Fed. Cir. 1987); In re Joint-Stock Co. “Baik”,
80 USPQ2d 1305 (TTAB 2006); and In re JT Tobacconists, 59
USPQ2d 1080 (TTAB 2001). If the goods do in fact originate
from the place named in the mark, the requisite goods/place
association can be presumed. See In re Handler Fenton
Westerns, Inc., 214 USPQ 848 (TTAB 1982).
We find, first, that the word VERMONT in applicant’s
marks is the name of a place known generally to the
American public, i.e., the State of Vermont. The term

5 Unless otherwise noted, all references to the dates of
correspondence between applicant and the examining attorney
during prosecution of these applications and evidence attached
thereto refer to application Serial No. 77368754.
Ser. Nos. 77368754 and 77385593
4
VERMONT is defined as “a state of the northeast United
States bordering on Canada.”6 The primary significance of
VERMONT to the American purchasing public thus is a known
geographic area. Further, there is nothing in the record
to suggest that VERMONT is either obscure or remote. Cf.
In re Societe Generale des Eaux Minerales de Vittel S.A., 3
USPQ2d 1450 (Fed. Cir. 1987). Nor is there any evidence of
record that VERMONT has any readily recognized significance
other than that of the State of Vermont.
Next, we find that the term ORGANICS in applicant’s
marks is highly descriptive of, if not generic for,
applicant’s “infant formula having organic ingredients.”
The term “ORGANIC” is defined as “characteristic of,
pertaining to, or derived from living organisms.”7 This
definition clearly identifies the nature of applicant’s
infant formula having ingredients that are organic, i.e.,
derived from living organisms. Indeed, applicant’s
identification of goods confirms the highly descriptive or
generic nature of the term.
We next turn to the question of whether VERMONT
ORGANICS in applicant’s marks is primarily geographically

6 The American Heritage® Dictionary of the English Language (4th
ed. 2000); attached as exhibit to examining attorney’s November
21, 2008 Office action.
7 Random House Dictionary, (2012); attached as exhibit to
examining attorney’s November 21, 2008 Office action.
Ser. Nos. 77368754 and 77385593
5
descriptive. “Under the first prong of the test – whether
the mark’s primary significance is a generally known
geographic location – a composite mark such as applicant’s
proposed mark must be evaluated as a whole...It is not
erroneous, however, for the examiner to consider the
significance of each element within the composite mark in
the course of evaluating the mark as a whole.” In re Save
Venice New York Inc., 259 F.3d 1346, 59 USPQ2d 1778, 1782
(Fed. Cir. 2001) [internal citations omitted]. In this
connection, it is well settled that “the presence of
generic or highly descriptive terms in a mark which also
contains a primarily geographically descriptive term does
not serve to detract from the primary significance of the
mark as a whole.” In re JT Tobacconists, 59 USPQ2d at
1082; see also In re Bacardi & Co. Ltd., 49 USPQ2d 1301
(TTAB 1997).
For the reasons set forth above, we find that the word
VERMONT in applicant’s marks is a reference to a well-known
geographic place, and that the term ORGANICS is highly
descriptive of, if not generic for, applicant’s “infant
formula having organic ingredients.” We further find that
the presence of the highly descriptive or generic term
ORGANICS in applicant’s marks does not detract from the
primary geographical significance of the marks as a whole.
Ser. Nos. 77368754 and 77385593
6
See In re Wine Society of America Inc., 12 USPQ2d 1139
(TTAB 1989); and In re Cambridge Digital Systems, 1 USPQ2d
1659 (TTAB 1986). Furthermore, there is no evidence of any
cogent alternative for the primary significance.
In sum, we find under the first prong of the Section
2(e)(2) test that the primary significance of applicant’s
marks is that of a well-known geographic place, i.e., the
State of Vermont. We next turn to the second prong of the
test, i.e., whether purchasers would make a goods/place
association between applicant’s goods and the place named
in the marks.
In its October 14, 2009 correspondence, applicant
acknowledges that its goods “will be made and packaged in
Georgia, Vermont.”8 Applicant reiterates that its “infant
formula and food for infants will originate in Vermont.”9
Because applicant’s goods originate from the place named in
the mark, namely, VERMONT, we may presume that purchasers
would make a goods/place association between applicant’s
goods and “VERMONT,” a geographic location that is neither
obscure nor remote. In re Chalk International Airlines
Inc., 21 USPQ2d 1637 (TTAB 1991); and In re California
Pizza Kitchen Inc., 10 USPQ2d 1704 (TTAB 1988).

8 Applicant’s October 14, 2009 correspondence, p. 1.
9 Id. at 2.
Ser. Nos. 77368754 and 77385593
7
In addition, we note that the examining attorney made
of record printed copies of pages from commercial and
informational internet websites suggesting that the State
of Vermont is noted for producing a variety of organic
foodstuffs.10 The following examples are illustrative:
nytimes.com, theorganicreport.com, and earthsbest.com, all
discuss production of organic baby food in Vermont;
commondreams.org, farmandwilderness.org,
butterworksfarms.com, and neighborlyfarms.com, all discuss
organic farms, especially dairy farms, in Vermont; and
boston.com, timesargus.com, and vjel.org discuss the
growing numbers of organic dairy farms in Vermont. This
evidence reinforces the presumption that purchasers will
make a good/place association between applicant’s goods and
the place named in its marks.
Applicant argues that the “examining attorney has
failed to make a prima facie showing that there is a
goods/place association between the State of Vermont and
infant formula”11 because there is no evidence of record to
support such an association. Applicant further argues that
the Board’s decision in California Pizza Kitchen is
contrary to “Federal Circuit precedent requiring that the

10 Examining attorney’s April 16, 2008 Office action.
11 Applicant’s brief, p. 4.
Ser. Nos. 77368754 and 77385593
8
trademark [examining] attorney present evidence
establishing a goods/place association.”12
However, applicant’s reliance upon such precedent is
misplaced. In re Societe Generale des Eaux Minerales de
Vittel S.A., 3 USPQ2d 1450 (Fed. Cir. 1987) involved the
French geographic term VITTEL, that was found to be “so
obscure or remote that purchasers would fail to recognize
the term as indicating the geographical source of the
goods” (emphasis in original). 3 USPQ2d at 1451. Thus,
the Court found that there was insufficient evidence that
the American consuming public would “be aware of the
existence of Vittel, France, or with its production of
mineral water.” 3 USPQ2d at 1452. As discussed above,
that is not the case here. There is nothing in the record
of this case to support a finding that VERMONT is obscure
or remote to American consumers, “at least in this country
which is all that matters.” Id.
In re Nantucket, Inc., 213 USPQ 889 (CCPA 1982)
involved a refusal to register NANTUCKET on the ground that
the term is geographically deceptively misdescriptive, and
was decided prior to the addition of a materiality element
to the Section 2(e)(3) test is “due to the NAFTA changes in
the Lanham Act.” In re California Innovations Inc., 66

12 Id. at 5.
Ser. Nos. 77368754 and 77385593
9
USPQ2d 1853, 1858 (Fed. Cir. 2003), citing In re Budge Mfg.
Co., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir.
1988). In short, applicant points to no authority for its
apparent position that our precedential decisions providing
for a presumption of a goods/place association in cases
like the ones at hand is incorrect.
Further, applicant has not presented evidence to rebut
the presumption of a goods/place association which arises
from the fact that applicant is located in, and its goods
originate from, the place named in the mark. Applicant
made of record a copy of Registration No. 2813938 for the
mark VERMONT NATURALS for “vitamins, dietary supplement”
(NATURALS disclaimed). We note, however, that this
registration subsequently was cancelled under Section 8 of
the Trademark Act. In addition, applicant made of record
copies of two applications that were abandoned for failure
to file a Statement of Use. It is settled that expired
registrations and pending and abandoned applications are of
no probative value. See Action Temporary Services Inc. v.
Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed.
Cir. 1989) (“[A] cancelled registration does not provide
constructive notice of anything”); and Interpayment
Services Ltd. v. Docters & Thiede, 66 USPQ2d 1463 (TTAB
2003) (applications show only that they have been filed).
Ser. Nos. 77368754 and 77385593
10
Similarly, applicant’s listing of precedential
decisions in which marks incorporating geographic terms,
none of which incorporate or contain the term VERMONT or
ORGANICS, for goods or services wholly unrelated to those
at issue herein, is of no probative value. We are not
privy to the facts or records of these cases which, as
noted above, involve marks and goods or services unrelated
to VERMONT ORGANICS for “infant formula having organic
ingredients.” Also, and 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).
We have considered all of the arguments and evidence
made of record by applicant and the examining attorney,
including any arguments and evidence not specifically
discussed herein. We find that the wording VERMONT
ORGANICS in applicant’s marks identifies a well-known
geographic location, and that purchasers would make a
goods/place association between applicant’s goods and the
place named in the mark. Because both elements of the
Section 2(e)(2) refusal have been established, we find that
the examining attorney has established, prima facie, that
applicant’s marks are primarily geographically descriptive
Ser. Nos. 77368754 and 77385593
11
of applicant’s goods. Applicant’s arguments to the
contrary are not persuasive.
Decision: The refusal to register the mark VERMONT
ORGANICS in application Serial No. 77368754 on the ground
that the mark is primarily geographically descriptive of
the goods is affirmed. The refusal to register the mark
VERMONT ORGANICS and design in application Serial No.
77385593 absent a disclaimer of VERMONT ORGANICS on the
ground that such wording is primarily geographically
descriptive of the goods is affirmed.