Pennwood Products, Inc.

Trademark Trial and Appeal Board

Dec 11, 2008

No. 77035983 (T.T.A.B. Dec. 11, 2008)

Mailed: December 11, 2008
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Pennwood Products, Inc.
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Serial No. 77035983
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Bryce J. Maynard of Buchanan Ingersoll & Rooney P.C. for
Pennwood Products, Inc.

Julie A. Watson, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
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Before Hairston, Bucher and Zervas, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Pennwood Products, Inc. has filed an application to
register the mark PENN STAIRS (in standard character form
with STAIRS disclaimed) for “stairs, stair treads, and
stair risers, not of metal” in International Class 19.1
Registration has been finally refused under Section

1 Serial No. 77035983, filed August November 3, 2006, alleging a
bona fide intention to use the mark in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77035983
2
2(e)(2) of the Trademark Act, 15 U.S.C. §1052(e)(2), on the
ground that applicant’s mark is primarily geographically
descriptive of the identified goods.
Applicant has appealed. Both applicant and the
examining attorney have filed briefs. We affirm the
refusal to register.
The issue on appeal is whether applicant’s mark PENN
STAIRS is primarily geographically descriptive. The test
for determining whether a mark is primarily geographically
descriptive is whether (1) the primary significance of the
mark 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 or will originate in or from that
place. If these elements are met, and if the applicant’s
goods in fact originate or will originate in or from the
place named in the mark, then the mark is primarily
geographically descriptive of the goods. See In re
Societe-Generale des Eaux Minerales de Vitel 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).
First, we consider whether the primary significance of
the mark is the name of a place generally known to the
Ser No. 77035983
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public. There is no dispute that the state of Pennsylvania
is a generally known geographic location, and that “Penn”
is a recognized abbreviation for Pennsylvania. We grant
the examining attorney’s request to judicially notice that
The American Heritage Dictionary of the English Language
(4th ed. 2000) lists “Penn.” as one of three abbreviations
for “Pennsylvania.” In addition, the examining attorney
submitted Internet printouts which contain references to,
inter alia, the “Penn Quakers” basketball team of the
University of Pennsylvania; “Penn State University;” and
“Penn National Pennsylvania Thoroughbred Racetrack.”
It is well settled that nicknames and abbreviations
for a geographic location are considered the equivalent of
the official or formal name for purposes of determining
registrability of the geographic term. See In re Carolina
Apparel, 48 USPQ2d 1542 (TTAB 1998) [the term CAROLINA,
used to indicate either North Carolina or South Carolina,
is geographically descriptive]; and In re Charles S. Loeb
Pipes, Inc., 190 USPQ 238, 246 (TTAB 1975) [OLD DOMINION is
an accepted nickname for the State of Virginia; “nicknames
and even abbreviations and maps of geographical areas and
the names of the geographical area that they identify are,
for purposes of registration, identical, and … the same
criteria for registration must necessarily apply thereto”].
Ser No. 77035983
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On this record, we find that the primary significance
of the term “Penn” is geographic,2 and also that the primary
significance of PENN STAIRS, in its entirety, is
geographic. The addition of a generic word to a
geographical term does not overcome the primary
significance of the mark as a whole. See In re JT
Tobacconists, supra at 1082. [MINNESOTA CIGAR COMPANY held
primarily geographically descriptive of cigar products].
The word STAIRS is generic for goods identified as “stairs”
and the combination of that word with PENN does nothing to
alter the geographic significance of PENN alone. Applicant
does not dispute that the primary significance of its mark
is geographic. Rather, applicant contends that the public
would not make a goods/place association.
We consider then whether the public would make a
goods/place association between applicant’s identified
goods and its mark. Applicant contends that the examining
attorney has failed to present any evidence establishing a
connection between stair products and Pennsylvania.
According to applicant, the mere fact that it is located in
Pennsylvania is not enough to establish a goods/place
association between its stairs, stair treads, and stair

2 The absence of a period after “Penn” does not alter the
geographic significance of the term.
Ser No. 77035983
5
risers and Pennsylvania. Nor is it enough that
Pennsylvania is a large state which could conceivably be
the source of stair products. Applicant relies on In re
Venice Maid Co., Inc., 222 USPQ 618 (TTAB 1984) and In re
California Innovations, Inc., 329 F.3d 1334, 66 USPQ2d 1853
(Fed. Cir. 2003). However, as the examining attorney
points out, applicant’s reliance on these two cases is
misplaced because each dealt with the issue of whether a
mark is primarily geographically deceptively
misdescriptive. The legal analysis used in determining
whether a mark is primarily geographically deceptively
misdescriptive is not the same as that used in determining
whether, as here, a mark is primarily geographically
descriptive.
As the Board has stated, “where the goods or services
actually originate from the geographic place designated in
the mark, a public association of the goods or services
with the place named may ordinarily be presumed.” In re
Carolina Apparel, supra, 48 USPQ2d at 1543. The place need
not be known for that type of good generally. In re
California Pizza Kitchen, supra, 10 USPQ2d at 1707. In
view thereof, we find that the public would indeed make a
goods/place association here because consumers would
naturally assume that the stairs, stair treads, and stair
Ser No. 77035983
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risers identified by the involved mark originate in
Pennsylvania.
The last question we consider is whether the goods
will in fact come from the place named in applicant’s mark.
Applicant is located in East Berlin, Pennsylvania and
applicant does not dispute that the goods will come from
Pennsylvania. Therefore, we find that the goods will in
fact come from the place named in the mark.
Based on the record in this case, we conclude that
applicant’s mark is primarily geographically descriptive
under the applicable test. The state of Pennsylvania is a
generally known geographic location; “Penn” is a recognized
abbreviation for “Pennsylvania;” the public would make an
association between the goods identified in the application
and the geographical location set forth in the mark; and
applicant’s goods will in fact come from Pennsylvania.
Decision: The refusal to register is affirmed.