Punita Leathers, Inc.

Trademark Trial and Appeal Board

May 30, 2013

No. 85394069 (T.T.A.B. May. 30, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
May 30, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Punita Leathers, Inc.
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Serial Nos. 85394069 and 853744861
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Clifford D. Hyra of Symbus Law Group LLC for Punita Leathers, Inc.

Dominick J. Salemi, Trademark Examining Attorney, Law Office 106 (Mary I.
Sparrow, Managing Attorney).
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Before Quinn, Grendel and Kuhlke, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Applicant, Punita Leathers, Inc., seeks registration on the Principal Register
of the mark BLUE RIDGE in standard characters for goods identified as “towels;
washcloths,” in International Class 252 and “all-purpose carrying bags; athletic

1 Inasmuch as the issues raised by the above-listed appeals are similar, the Board is
addressing them in a single opinion. Citations to the briefs and record refer to the briefs
and record filed in application Serial No. 85394069, unless otherwise noted; however, we
have, of course, considered all arguments and evidence filed in each case.

2 Application Serial No. 85394069, filed on August 10, 2011, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), alleging March 18, 2010, as the date of first use and
first use in commerce.

Serial Nos. 85394069 and 85374486

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bags; backpacks; duffel bags; shoulder bags; travel bags; wallets,” in International
Class 18.3 The application lists applicant’s address in Chantilly, Virginia.
In each application, the examining attorney refused registration under
Section 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 its goods.
When the refusal was made final, applicant appealed and requested
reconsideration. On November 1, 2012, the examining attorney denied the request
for reconsideration, the appeal was resumed and briefs have been filed.4 We reverse
the refusal to register under Section 2(e)(2).
In maintaining the refusal, the examining attorney argues that the primary
significance of BLUE RIDGE is a generally known geographic place. The
examining attorney supports this conclusion with the following evidence:
Wikipedia excerpt on the “BLUE RIDGE MOUNTAINS” describing the
mountain range as located “in the eastern United States, starting at its

3 Application Serial No. 85374486, filed on July 19, 2011, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), alleging May 4, 2003, as the date of first use and first
use in commerce.

4 We note that in applicant’s request for reconsideration, applicant requested that “[i]n the
event that the finding that the mark is primarily geographically descriptive is ultimately
upheld ... Applicant asserts, in the alternative, that the mark has become distinctive of the
goods under section 2(f) by virtue of over five years of continuous and substantially
exclusive use in commerce. Applicant wishes to appeal and is merely making the evidence
of record at this time so that if the [Board] upholds the Examining Attorney’s refusal under
Section 2(e)(2) said evidence of secondary meaning may be offered to the Board in the
alternative.” In denying the request, the examining attorney asserted that the request does
not “raise a new issue.” To the contrary, we find applicant’s statements sufficiently raise
the issue of registration under Section 2(f) in the alternative. See TMEP § 1212.02(c)
(2013). Although the request in the alternative is deficient without a supporting
declaration, the request warranted a non-final Office action. However, in view of our
ultimate determination, we decline to remand the case for consideration of the Section 2(f)
request.
Serial Nos. 85394069 and 85374486

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southern-most portion point Georgia, then ending northward in
Pennsylvania” and referring to it as the “Blue Ridge”;5

An excerpt from “The Free Dictionary” (www.dictionary.com) listing
“Blue Ridge” as “A range of the Appalachian Mountains extending
from southern Pennsylvania to northern Georgia”;6

An excerpt from “Virginia Visitors Network”
(www.virginavisitorsnetwork.com) showing “the Valley area” of
Virginia noting that it “lies against the Blue Ridge in the east”;7and

A map showing “the blue ridge area of Virginia” (maps.google.com).8

Next the examining attorney contends that because applicant “lists its
central business location in Chantilly, Virginia ... it can be safely said or argued
that its goods are, at the very least, ‘shipped’ and/or ‘packaged’ from that location
[and] [i]f one had any doubts as to this a visit to applicant’s website would dispel
such misgivings as therein one would find applicant and its ordering catalog and
applicant on its home page describing itself as a manufacturer and supplier ‘based’
in Chantilly, Virginia.”9 The examining attorney asserts that Chantilly, Virginia is
“within or part of the Blue Ridge Mountain area.” The examining attorney relies on
the following evidence in support of this determination:

5 First Office Action (August 31, 2011), TDRS pp. 2-5.

6 Final Office Action (March 26, 2012), TDRS pp. 2-4.

7 Final Office Action (March 26, 2012) (Ser. No. 85374486), TDRS p. 4. This area does not
include Fairfax County where Chantilly, Virginia is located.

8 Final Office Action (March 26, 2012) (Ser. No. 85374486), TDRS p. 6. The map does not
show Chantilly, Virginia.

9 E. A. Br. pp. 6-7. The examining attorney did not make applicant’s website of record and
we give this statement no probative value.
Serial Nos. 85394069 and 85374486

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Driving directions retrieved from mapquest.com showing a distance of
approximately seventy miles between Chantilly, Virginia and Luray,
Virginia;10 and

An excerpt from the BostonGlobe.com titled “Things To Do in
Chantilly” listing as activities, inter alia, (1) Skyline Drive distance
63.7 miles “The Skyline Drive runs 105 miles north and south along
the crest of the Blue Ridge Mountains,” (2) Chesapeake Beach Fishing
Charters distance 50.6 miles in Chesapeake Beach Maryland, (3) Old
State House, “The Green” in Dover, Delaware distance 104.1 miles, (4)
Bunky’s Charter Boats in Solomon’s Island, Maryland distance 65.4
miles, and (5) Chesapeake Bay Maritime Museum distance 65.5 miles.
11

Finally, the examining attorney points to applicant’s expired registration for
a composite mark that apparently included a disclaimer for the wording BLUE
RIDGE SPORTS.12 The examining attorney asserts that this prior disclaimer

10 Final Office Action (March 26, 2012) (Ser. No. 85374486) TDRS pp. 7.

11 Final Office Action, TDRS p. 5.

12 We first note that, again, the examining attorney did not make this prior registration of
record. Further, while a disclaimer made in a registration may be viewed as an admission
that the term is merely descriptive, Bass Pro Trademarks , LLC v. Sportsman’s Warehouse,
Inc., 89 USPQ2d 1844, 1851 (TTAB 2008), a review of Office records indicates that this
registration has expired. An expired registration “is not evidence of anything except that
the registration issued.” TBMP § 704.03(b)(1)(A) and cases cited therein. Moreover, a prior
disclaimer does not “moot the request for an inherent distinctiveness registration.” In re
Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1685 (Fed. Cir. 2010). Although,
applicant may have agreed to disclaim the term in prosecuting a prior application, we do
not know the circumstances of that prosecution and only have the present record upon
which to make our determination. In re John Harvey & Sons Ltd., 32 USPQ2d 1451, 1455
(TTAB 1994) (“Applicant’s prior registrations which include disclaimers or claims of
acquired distinctiveness are of little moment. We are not privy to the files of these
registrations; moreover, the Board is not bound by any such prior determinations by the
Office.”) Even if we ignore that the prior registration is not of record and expired, and view
the prior disclaimer as “illuminative of shade and tone in the total picture,” Interstate
Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 154 (CCPA 1978),
we still find this record not only insufficient to support the refusal but actually supports
applicant’s position.

Serial Nos. 85394069 and 85374486

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“constitutes an admission of the merely descriptive, or in this case, geographically
descriptive nature of a term.”13
“In order for a mark to be considered primarily merely descriptive under
Section 2(e)(2), it must be shown that (1) the mark’s primary significance is a
generally known geographic location; and (2) that the relevant public would be
likely to make a goods/place association, that is, would be likely to believe that the
goods originate in the place named in the mark.” In re Spirits of New Merced LLC,
85 USPQ2d 1614, 1616 (TTAB 2007). See also In re Societe Generale des Eaux
Minerals de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); In re
Brouwerij Nacional Balashi NV, 80 USPQ2d 1820, 1821 (TTAB 2006); In re JT
Tobacconists, 59 USPQ2d 1080 (TTAB 2001); and TMEP 1210.01(a) (2013) (“To
establish a prima facie case for refusal to register a mark as primarily
geographically descriptive, the examining attorney must show that: (1) the primary
significance of the mark is a generally known geographic location, (2) the goods or
services originate in the place identified in the mark; and (3) purchasers would be
likely to believe that the goods or services originate in the geographic place
identified in the mark.”)
We begin by finding that the relevant purchasing public for the goods at issue
(wash cloths, towels and various bags) consists of the general public interested in
purchasing such goods.
With regard to the primary significance of the term “Blue Ridge,” we find
that it is a generally known geographic location. The evidence shows that the term

13 Final Office Action (March 26, 20012), TDRS p. 1.
Serial Nos. 85394069 and 85374486

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“Blue Ridge” refers to a geographic location, namely a specific mountain range that
runs from Georgia to Pennsylvania, going through Virginia. In addition, the Blue
Ridge contains known national parks and other tourist destinations such as Luray
Caverns.
Next we consider whether the goods come from the area and whether the
public would make a goods/place association; that is, would the public be likely to
believe that the goods originate in the place named in the mark. When “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.” In re
Handler Fenton Western, Inc., 214 USPQ 848, 850 (TTAB 1982). See also In re
Mankovitz, 90 USPQ2d 1246 (TTAB 2009).
Applicant first contends that the “Blue Ridge” does not “encompass the
location of the applicant.”14 Second, applicant states that its goods are
manufactured outside of the United States, and there is nothing in the record to
contradict this statement. Applicant characterizes Chantilly, Virginia as its
“headquarters.”
We first find that the record does not establish that Chantilly, Virginia is
within the “Blue Ridge area.” Nothing in the record shows Chantilly, Virginia as
within the Blue Ridge. Moreover, the mere fact that Chantilly, Virginia is 63 miles
away from Skyline Drive in the Blue Ridge does not automatically link it to or

14 App. Br. p. 3.
Serial Nos. 85394069 and 85374486

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associate it with the Blue Ridge. In re Spirits of New Merced, LLC, 85 USPQ2d
1614, 1621 (TTAB 2007) (“Yosemite has a significant relationship to the source of
applicant’s goods. Applicant’s business is located in a city whose economy, and
largely its identity, center around its association with Yosemite National Park, an
association that the city has fostered and promoted for more than a century.”) See
also In re Joint-Stock Co. “Baik,” 80 USPQ2d 1305, 1310-11 (TTAB 2006) (applicant
manufactured its vodka in a city close to Lake Baikal and used water from Lake
Baikal). By that calculation, the words Chesapeake (50 miles distance) and
Solomon’s Island (65 miles distance) would be geographically descriptive of
Chantilly, Virginia. See Bostonglobe.com, supra. As applicant states, Chantilly,
Virginia “is in the heart of Fairfax County, a robust and populous suburb of
Washington D.C.”15
Moreover, there is nothing in the record to establish that the goods may be
considered to originate from Chantilly, Virginia. Applicant has clearly stated they
are not manufactured there, there is nothing in the record to establish that they are
packaged or shipped from there, and the mere fact that Chantilly is the corporate
headquarters is not necessarily sufficient. John Harvey & Sons Ltd., 32 USPQ2d at
1454 (“The mere fact that applicant’s headquarters are in Bristol, England does not
mandate a finding here that a goods/place association should be presumed”). But
see In re Nantucket Allserve, Inc., 28 USPQ2d 1144 (TTAB 1993) (NANTUCKET
NECTARS primarily geographically descriptive of beverages where, although
manufactured elsewhere, applicant’s headquarters, and research and development

15 App. Br. p. 4.
Serial Nos. 85394069 and 85374486

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were in Nantucket, and the labels fostered a goods/place association among
purchasers.)
Finally, there is nothing in the record to establish that the Blue Ridge is
known for the goods in issue, wash cloths, towels and bags. While “a public
association of the goods or services with the place may ordinarily be presumed from
the fact that the applicant’s goods or services come from the geographical place
named in the mark,” JT Tobacconists, 59 USPQ2d at 1082, the record does not
establish that they come from the place and, in addition, the Blue Ridge is not a
well-known geographic location, such as France, from which we could assume that a
wide variety of goods and services originate. In re Compagnie Generale Maritime,
993 F.2d 841, 26 USPQ2d 1652 (Fed. Cir. 1993). See also Mankovitz, 90 USPQ2d
1246 (MONTECITO DIET not primarily geographically descriptive of books, on-line
journals and health information where only evidence of association was applicant’s
address located in Montecito, California). In fact, the record points to the opposite,
revealing that much of the Blue Ridge consists of national parks devoid of any
commercial activity aside from tourism, which does not encompass textile or bag
manufacturing.
The facts of this case are distinct from those presented in New Merced, 85
USPQ2d at 1621, where the record established not only proximity of the city of
Merced to Yosemite Park but also established that the city of Merced fostered and
promoted an association with Yosemite, and Joint-Stock Co. “Baik,” 80 USPQ2d
Serial Nos. 85394069 and 85374486

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1310, where applicant made its vodka located in a city close to Lake Baikal using
water from Lake Baikal.
We find these facts more in line with In re Gale Hyman Inc., 15 USPQ2d
1478, 1479 (TTAB 1990) where the Board noted that:
The mere fact that applicant’s principal offices are in Century City,
close to Sunset Boulevard, does not mandate a finding that a
goods/place association should be presumed. Sunset Boulevard itself
would have to be associated with the products in such a way that the
consuming public would be likely to assume that Sunset Boulevard
was the place in which the perfume and cologne originated. Nothing in
the record, however, indicates or even suggests that purchasers would
believe that Sunset Boulevard was the place of manufacture or
production of the perfume and cologne.

In view of the above, the Office has not satisfied its burden to establish that
BLUE RIDGE is primarily geographically descriptive of applicant’s goods.
Decision: The refusal to register is reversed.