Piter Societá a Responsabilitá Limitata

Trademark Trial and Appeal Board

Sep 22, 1998

No. 74621510 (T.T.A.B. Sep. 22, 1998)

Paper No. 17
HRW
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Piter Societa’ A Responsabilita’ Limitata
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Serial No. 74/621,510
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Jonathan Myers and Herbert Dubno of The Firm of Karl F.
Ross, P.C. for applicant.
Andrew D. Lawrence, Trademark Examining Attorney, Law
Office 108 (David Shallant, Managing Attorney).
_______
Before Seeherman, Hohein and Wendel, Administrative
Trademark Judges.
Opinion by Wendel, Administrative Trademark Judge:
Piter Societa’ A Responsabilita’ Limitata has filed an
application to register the mark depicted below
for “clothing articles, namely, wind-resistant jackets,
neckerchiefs, jackets, trousers, waistcoats, jeans, vests,
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gloves, socks, tank tops, blousons, T-shirts, stockings,
bandannas, head bands, pants, belts, scarves, skirts, head
wear, and footwear".1
Registration has been finally refused under Section
2(e)(3) of the Trademark Act, 15 U.S.C. § 1052(e)(3), on
the ground that the mark, when used in connection with
applicant’s goods, is primarily geographically deceptively
misdescriptive thereof.2

1 Ser. No. 74/621,510, filed January 17, 1995, with a claimed
first use date of Nov. 26, 1993 and a claimed first use date in
commerce between Italy and the United States of October 10, 1994.
2 In the early stages of prosecution of this case, applicant
submitted disclaimers of the terms MOTOR JACKET and CALIFORNIA,
separately. Applicant next submitted a declaration under Section
2(f) and a request to amend the application to one on the
Supplemental Register. The Examining Attorney, in response,
pointed out that the latter two avenues could not be undertaken
concurrently, and that in any event, neither avenue was available
to applicant since its first alleged use in commerce was not
until October 10, 1994. By the amendment of the Trademark Act,
on January 1, 1994, to implement provisions of the North American
Free Trade Agreement, primarily geographically deceptively
misdescriptive marks may no longer be registered under 2(f), with
the exception of marks which had become distinctive in commerce
before December 8, 1993, nor may they be registered on the
Supplemental Register, with the exception of marks which had been
in lawful use in commerce before December 8, 1993. Thus,
applicant could not qualify for either exception. Applicant
subsequently withdrew the request to amend to the Supplemental
Register, but the 2(f) declaration, although unacceptable,
remains of record.
In the continuation of the final refusal, after consideration
of applicant’s response after such refusal, the Examining
Attorney noted that applicant’s change of position to arguing the
merits of the 2(e)(3) refusal only occurred after its other
attempts had failed. The Examining Attorney argued that the
attempt to register under 2(f) should be considered a concession
that the matter was not inherently distinctive.
In its brief on appeal, applicant maintains that it should not
be precluded from arguing that its mark is inherently
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Applicant and the Examining Attorney have filed
briefs, but no oral hearing was requested.
The criteria to be applied in determining whether a
mark is primarily geographically deceptively misdescriptive
are:
(1) whether the primary significance of the mark
is the name of a generally known geographic
place,
(2) whether the goods come from other than the place
named, and
(3) whether purchasers would be likely to believe
that the goods with which the mark is used
originate from that place.
See In re Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865
(Fed. Cir. 1985); In re Nantucket, Inc., 677 F.2d 95, 213
USPQ 889 (CCPA 1982); Fred Hayman Beverly Hills Inc. v.
Jacques Bernier Inc., 38 USPQ2d 1691 (TTAB 1996).
Applicant has stated for the record that the goods
involved originate in Italy, rather than California. Thus,
the second criterion has been met.

distinctive, inasmuch as the attempt to show acquired
distinctiveness was simply an alternative measure adopted in
seeking to register applicant’s mark.
We agree that no preclusive effect should be given to the
alternative positions taken by applicant during prosecution and
thus have given full consideration to applicant’s arguments with
respect to the Section 2(e)(3) refusal. Applicant has abandoned
any attempt to rely upon Section 2(f) and thus no consideration
need be given to this claim. See TMEP § 1212.02(c).
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Looking to the first of the two remaining criteria, we
find that the initial inquiry in this case must be whether
the primary significance of the mark as a whole would be
the name of a geographic location. Applicant argues that
the features of this composite mark other than the term
CALIFORNIA, namely, the motorcycle design, the initials
C.M.J. and the words MOTOR JACKET, all serve to remove the
mark from the category of being “primarily geographic”.
The Examining Attorney, on the other hand, takes the
position that a mark need not be comprised solely of a
geographic term to be refused registration as being
primarily geographically deceptively misdescriptive and
that the additional features in the present mark would not
detract from the primary significance of the mark as an
indicator of geographic origin, namely, CALIFORNIA.
We do not consider the additional features in
applicant’s mark to be of sufficient import to obviate the
mark’s geographic significance. The motorcycle design
clearly ties in with the words MOTOR JACKET, which has been
disclaimed as being descriptive of applicant’s goods. The
initials C.M.J., while having some source-indicative
significance, do not overcome the primary geographic
significance of the present mark. Instead we find this to
be a case similar to In re Perry Manufacturing Co., 12
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USPQ2d 1751 (TTAB 1989), in which the primary significance
of the mark PERRY NEW YORK and the outline of New York
skyline was found to be the indication to purchasers that
the clothing with which it was used was manufactured in or
had a connection with New York, despite the presence of the
term PERRY. See also In re Cambridge Digital Systems, 1
USPQ 1659 (TTAB 1986) [addition of highly descriptive term
DIGITAL and design does not detract from primary geographic
significance of mark CAMBRIDGE DIGITAL].
Applicant’s main argument, however, is that the
primary significance of the term CALIFORNIA, in itself, is
as an indicator of a style of living or clothing that is
typical of those who travel by motorcycle or motorbike in
California, rather than as an indicator of geographic
origin. In support of its position, applicant has
introduced one of the definitions found in Webster’s Third
New International Dictionary (1993) for the adjective
“California”, namely, “of the kind or style prevalent in
California”.
The Examining Attorney, on the other hand, points to
the geographical definition which he has made of record for
“California” from Webster’s New Geographical Dictionary
(1988) as a “western state of U.S.A.”. The Examining
Attorney has also noted, in the course of prosecution, that
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applicant has provided no specific evidence that
prospective purchasers would think that “California Motor
Jacket” identifies a particular style of motor jacket which
is readily identifiable with California.
In order to make a determination on this issue,
however, we find it necessary to review the evidence
produced by the Examining Attorney with respect to the
third criterion, the goods/place association.
In this regard, the Examining Attorney has made of
record numerous articles obtained from the Nexis database
as evidence of the significance of fashion in California,
or more importantly, the significance of California as a
source of fashion apparel. For example, articles have been
introduced referring to “California couture”, “California
fashion”, “California fashion trends”, “California chic” as
well as to the “California fashion industry” and
“California fashion designers”. The Examining Attorney
argues that this evidence is adequate to meet the required
prima facie showing of a goods/place association, i.e.,
that there is a recognized fashion industry in California
and thus purchasers would be likely to believe applicant’s
clothing comes from California.
Applicant has challenged the Examining Attorney’s
interpretation of several of these articles, contending
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that the references to “California fashion” or California
fashions”, and particularly, “California chic”, may as
easily be construed as an indication of a style of clothing
and lifestyle of those who wear clothing of this type, as
that of a specific indication of the geographic source of
the clothing. In support of its position, applicant points
to references such as
“…the California-chic Zimmerman, who was dressed
in a natty suit with a black turtleneck” (Newsday,
May 5, 1996, North Hempstead Edition);
“… Medearis has just opened a clothing store
California fashions in the Georgian capital of
Tbilisi” (Business Week, Sept. 11, 1995, International
Editions); and
“Any mention of casual or California signals that
clothes should be relaxed, colorful and not too
structured, but made of a fine material, such as silk”
(Los Angeles Times, Oct. 27, 1994).
In rebuttal, the Examining Attorney argues that, while
some of the articles might be interpreted in the manner
advocated by applicant, applicant has still failed to
submit sufficient evidence to overcome the prima facie
showing made by the Office. We agree that the evidence
submitted by the Examining Attorney is adequate to meet the
requisite showing that, if the primary significance of
applicant’s mark is one of geographic location, there is a
reasonable basis for concluding that the public would be
likely to make the goods/place association that the
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clothing with which applicant’s mark is used comes from
California. See In re Loew’s Theatres, Inc, 226 USPQ at
868.
The determinative factor in this case is thus whether
applicant has established that the primary significance of
the term CALIFORNIA in its mark, as viewed by the
purchasing public, would be as an indicator of style,
rather than geographic location. If this is true, the
question of a goods/place association is moot. But we find
that applicant has failed to produce sufficient evidence to
demonstrate that the public would associate the term
“California” with the particular style at issue, in this
case a style of jacket, rather than with a geographic
location. See In re Californian Pizza Kitchen, Inc., 10
USPQ2d 1074 (TTAB 1988) [no evidence that “California”
indicator of style of cooking, rather than geographic
location]. While applicant has introduced evidence that
“California” may, under certain circumstances, have the
connotation of a particular style of dress which is
prevalent in California, applicant has introduced no
evidence that there is a particular style of motor or
motorcycle jacket which would be viewed as a “Califoria
Motor Jacket”.
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Accordingly, we find that the primary significance of
applicant’s mark as a whole is that of the geographical
term “California”, and that purchasers would be likely to
believe that applicant’s goods come from California, when
in fact they originate in Italy. Applicant’s mark is
therefore primarily geographically deceptive misdescriptive
with the meaning of the statute.
Decision: The refusal of registration under Section
2(e)(3) is affirmed.
E. J. Seeherman
G. D. Hohein
H. R. Wendel
Trademark Administrative Judges,
Trademark Trial and Appeal Board
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