Roy J. Mankovitz

Trademark Trial and Appeal Board

Mar 25, 2009

No. 77000589 (T.T.A.B. Mar. 25, 2009)

Mailed:
25 March 2009
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Roy J. Mankovitz
________

Serial No. 77000589
_______

John G. Posa of Gifford, Krass, Sprinkle, Anderson &
Citkowski, P.C. for Roy J. Mankovitz.

John M. Wilke, Trademark Examining Attorney, Law Office 104
(Chris Doninger, Managing Attorney).
_______

Before Quinn, Walters, and Drost, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On September 15, 2006, Roy J. Mankovitz (applicant)
filed an intent-to-use application to register the mark THE
MONTECITO DIET, in standard character form, on the
Principal Register for goods and services ultimately
identified as:
Printed publications, namely, books, magazines,
newsletters, brochures, and pamphlets concerning
health, nutrition, illness prevention, detoxification,
diet and lifestyle choices in Class 16
THIS OPINION IS A
PRECEDENT OF THE TTAB
Ser. No. 77000589
2

On-line journals, namely, blogs featuring information
in the field of health, nutrition, illness prevention,
detoxification, and diet and lifestyle choices in
Class 41

Providing health information; providing information in
the field of nutritional counseling; providing
information in the field of illness prevention, diet,
detoxification, and lifestyle choices; providing
global computer websites featuring information in the
field of health, nutrition, illness prevention,
detoxification, and diet and lifestyle choices in
Class 44

The application also contains a disclaimer of the word
“diet.”1
The examining attorney has refused to register
applicant’s mark on the ground that the mark is primarily
geographically descriptive under Section 2(e)(2) of the
Trademark Act. 15 U.S.C. § 1052(e)(2). When the examining
attorney made the refusal to register final, applicant
filed a notice of appeal.
In support of his refusal, the examining attorney
submitted the following information from www.wikipedia.org
for Montecito, California:
Montecito is a census-designated place (CDP) in Santa
Barbara County, California. As of the 2000 census,
the CDP population was approximately 10,000, although
the boundaries are ill-defined. Montecito is among
the wealthiest communities in the United States and is
home to many celebrities. It is east of, and directly
adjacent to the city of Santa Barbara, occupying the
eastern portion of the coastal plain south of the

1 Serial No. 77000589.
Ser. No. 77000589
3
Santa Ynez Mountains. Portions of the town are built
on the lower foothills of the range. Notable roads
spanning the length of Montecito include Mountain
Drive, Sycamore Canyon Road, and East Valley Road. It
is one of the wealthiest areas in California.

Geography
Montecito is located at 34°26′1″N, 119°37′55″W
(34.433687, -119.631845).
According to the United States Census Bureau, the CDP
has a total area of 24.2 km2 (9.3 mi2), all land.
Demographics
As of the census of 2000, there were 10,000 people,
3,686 households, and 2,454 families residing in the
CDP. The population density was 413.8/km²
(1,072.3/mi²). There were 4,193 housing units at an
average density of 173.5/km² (449.6/mi²). The racial
makeup of the CDP was 94.03% White, 0.48% African
American, 0.31% Native American, 1.29% Asian, 0.21%
Pacific Islander, 2.14% from other races, and 1.54%
from two or more races. Hispanic or Latino of any
race were 5.19% of the population.
There were 3,686 households out of which 25.7% had
children under the age of 18 living with them, 57.1%
were married couples living together, 7.2% had a
female householder with no husband present, and 33.4%
were non-families. 27.0% of all households were made
up of individuals and 14.0% had someone living alone
who was 65 years of age or older. The average
household size was 2.41 and the average family size
was 2.85.
In the CDP the population was spread out with 18.4%
under the age of 18, 13.5% from 18 to 24, 16.6% from
25 to 44, 30.0% from 45 to 64, and 21.5% who were 65
years of age or older. The median age was 46 years.
For every 100 females there were 84.7 males. For
every 100 females age 18 and over, there were 82.1
males.
The median income for a household in the CDP was
$110,669, and the median income for a family was
$130,123. Males had a median income of $81,719 versus
$42,182 for females. The per capita income for the
Ser. No. 77000589
4
CDP was $70,077. About 2.3% of families and 3.8% of
the population were below the poverty line, including
2.6% of those under age 18 and 2.2% of those age 65 or
over.
Points of Interest
- Lotusland
- Montecito is the home to many celebrities,
including Oprah Winfrey, Steve Martin, Eva Marie
Saint, Tab Hunter, John Cleese, Rob Lowe, Jimmy
Connors, Avril Lavigne, Christopher Lloyd, Troy
Aikman, Kevin Costner and billionaire businessman
Ty Warner.
- Westmont College
- Montecito Journal – Local Newspaper
- Amusement Safety Organization, Inc. – national
amusement safety & travel research organization
- The Music Academy of the West

We add that applicant, an individual, lists his
address as “Montecito, California.”
“In order for a mark to be considered primarily
geographically 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 Brouwerij Nacional Balashi NV, 80
USPQ2d 1820, 1821 (TTAB 2006); In re Handler Fenton
Westerns, Inc., 214 USPQ 848, 849-50 (TTAB 1982); and TMEP
§ 1210.01(a) (5th ed. Sept. 2007) (Test for geographically
descriptive marks: (1) the primary significance of the
Ser. No. 77000589
5
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).
Furthermore, the Federal Circuit has quoted the board
as correctly saying:
[H]ere a refusal of registration is based on the
finding that a mark if primarily geographically
descriptive of the goods, that is, the goods actually
come from the geographical place designated in the
mark, the Examining Attorney must submit evidence to
establish a public association of the goods with the
place if, for example, there exists a genuine issue
raised that the place named in the mark is so obscure
or remote that purchasers would fail to recognize the
term as indicating the geographical source of the
goods.

In re Societe Generale Des Eaux Minerales de Vittel S.A.,
824 F.2d 957, 3 USPQ2d 1450, 1451 (Fed. Cir. 1987)
(emphasis omitted).
We begin by noting that applicant’s mark is not simply
MONTECITO but rather THE MONTECITO DIET. However, the
additional word “diet” would not overcome the primarily
geographically descriptive refusal because the subject
matter of applicant’s goods and services include, inter
alia, diet-related information. Therefore, the term “diet”
would not be sufficient to establish a non-geographically
descriptive meaning for the mark. Highly descriptive or
Ser. No. 77000589
6
generic wording does not convert a geographically
descriptive term into a non-geographic term. In re
Compagnie Generale Maritime, 993 F.2d 841, 26 USPQ2d 1652
(Fed. Cir. 1993) (FRENCH LINE (stylized) primarily
geographically descriptive of goods and services from
France); In re Cambridge Digital Systems, 1 USPQ2d 1659,
1662 (TTAB 1986) (CAMBRIDGE DIGITAL and design primarily
geographically descriptive when applicant’s place of
business is Cambridge, Massachusetts); and In re Carolina
Apparel, 48 USPQ2d 1542, 1543 (TTAB 1998) (“The addition of
a generic term to a geographic term does not avoid the
refusal of primary geographic descriptiveness”).
Therefore, we now address whether the term “Montecito”
is a generally known geographic location. The evidence
shows that Montecito refers to an area near Santa Barbara,
California, with approximately 10,000 inhabitants and it is
the “home of many celebrities.” There is no evidence that
the term has any other meaning. We find that this minimal
information does show that the term is a generally known
geographic location. Accord In re MCO Properties Inc., 38
USPQ2d 1154, 1156 (TTAB 1995) (“The record shows that
“FOUNTAIN HILLS” is the name of the town in Arizona where
applicant is located and renders its services. The
materials submitted by the Examining Attorney, as well as
Ser. No. 77000589
7
the specimens submitted by applicant with its application,
establish this. The term sought to be registered is
clearly a geographic name and has no other significance.
This satisfies the first part of the test”).
Next, we must consider whether the goods and services
come from the area and whether the public would make a
goods/place2 association; that is, would the public be
likely to believe that the goods or services 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.” Handler Fenton, 214
USPQ at 850 (emphasis added). Therefore, when goods come
from a specific geographic location, that is normally
enough to find a goods/place relationship. Compagnie
Generale Maritime, 26 USPQ2d at 1655 (“We likewise hold
that the Board did not clearly err in finding that ‘France,
a major manufacturing and commercial nation, would be
perceived as the source of the numerous goods and services

2 Or services/place.
Ser. No. 77000589
8
listed in the applications if the mark is primarily
geographical’”) and In re JT Tobacconists, 59 USPQ2d 1080,
1084 (TTAB 2001) (“[W]e find that a goods/place association
exists in that customers for applicant's goods would
believe that its cigars, cigar cases and humidors are
manufactured in the State of Minnesota and that, because
applicant’s goods do indeed come from such state, its mark
is primarily geographically descriptive of its goods”).
We have no evidence that Montecito is a well-known
geographic location, such as France, from which we could
assume that a wide variety of goods and services originate.
Compagnie Generale Maritime, 26 USPQ2d at 1655. Here, the
examining attorney argues that:
(1) “applicant is located in Montecito, so applicant’s
goods and services do or will originate in Montecito; and
purchasers would indeed be likely to believe that the goods
and services originate in Montecito” (Brief at unnumbered
p. 3; See also Brief at 5), and
(2) “Since applicant lives in Montecito the mark is
closely connected to applicant’s goods and services” (Brief
at 6).
In addition, the examining attorney also points to
applicant’s street address in Montecito and argues that
“the public is likely to believe that the mark identifies
Ser. No. 77000589
9
the place from which the goods and services originate.”
Brief at 6. However, the mere fact that applicant sleeps
in Montecito is not necessarily enough to establish a
goods/place relationship. Indeed, even the location of a
corporate headquarters is not necessarily sufficient to
show a goods/place relationship. In re John Harvey & Sons
Ltd., 32 USPQ2d 1451, 1454 (TTAB 1994) (“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”). In another case, applicant applied
to register the mark LAUDERDALE FARM for meats and poultry.
The fact that applicant was located in Lauderdale, Alabama,
did not establish a goods/place relationship.
That reference indicates only that it [Lauderdale
County, Alabama] is a cotton-growing area and makes no
reference to any of the products [meats and poultry]
for which applicant now seeks to register the mark
LAUDERDALE FARM. Even assuming that the facts set
forth in the Gazetteer are common knowledge, an
assumption we find difficult to accept, the evidence
is insufficient to support any public association on
the part of the public of the term “Lauderdale” with
fresh processed meat and poultry products.

In re Consolidated Foods Corp., 218 USPQ 184, 186 (TTAB
1983). Accord In re Gale Hayman Inc., 15 USPQ2d 1478, 1479
(TTAB 1990) (footnote omitted):
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
Ser. No. 77000589
10
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. Indeed, there is no indication that any
perfume or cologne is manufactured or produced on
Sunset Boulevard.

See also West End Brewing Co of Utica, N.Y. v. South
Australian Brewing Co., 2 USPQ2d 1306, 1309 n.4 (TTAB 1987)
(“Applicant contends that the term ‘WEST END’ is primarily
geographically descriptive as applied to opposer’s beer and
that opposer has failed to prove secondary meaning. The
only evidence offered in support of this contention is that
opposer’s plant is located in the west side, or ‘west end,’
of the city of Utica, New York. This evidentiary showing
falls far short of what would be necessary, under the case
law, to establish that this term, as applied to opposer’s
beer products, is primarily geographically descriptive of
them”).
Indeed, while the board has found in the NANTUCKET
NECTARS case that the products did not have to be made on
the island of Nantucket in order to establish a goods/place
relationship, the applicant in that case had a substantial
presence in that place. In re Nantucket Allserve Inc., 28
USPQ2d 1144, 1145 (TTAB 1993) (“While it is true that
Ser. No. 77000589
11
applicant's NANTUCKET NECTARS soft drinks are manufactured
in Worcester, Massachusetts, applicant’s corporate
headquarters and, perhaps more importantly, applicant’s
center for research and development are located on
Nantucket. Thus, a principal origin, if not the principal
origin, of applicant’s products is Nantucket”) (citation to
record omitted). See also In re Steel House, Inc., 206
USPQ 956 (TTAB 1980) (“San Jose” held to be geographically
descriptive for applicant’s services (retail store services
for ornamental metal) when applicant’s place of business
and its services are in San Jose, California).
In this case, we have no evidence regarding
applicant’s presence in Montecito. The only suggestion of
a goods/place relationship with Montecito is the fact that
the examining attorney asserts that “applicant lives in
Montecito.”3 Brief at 6. Applicant argues that diets
“don’t really hail from anywhere, and even though the
Examining Attorney correctly points out that Applicant’s
goods include booklets, pamphlets and the like, it is more
likely to believe that they are printed in a place other
than Southern California… [P]rospective consumers of

3 This application is based on an intent to use. It is of course
possible that applicant’s specimens and/or his advertising for
the goods and services may demonstrate a connection with
Montecito, California, which is not apparent now.
Ser. No. 77000589
12
Applicant’s information would care little about the source
of origin, but rather, are interested in the information
itself.” Reply Brief at 2. The examining attorney argues
that “the goods and services identified in the application
are not ‘diets.’” Brief at 7.
A place does not have to be noted for a product to
establish that a term is geographically descriptive. JT
Tobacconists, 59 USPQ2d at 1084 (“There is no requirement…
that the State of Minnesota be noted for cigars and cigar
products in order for a mark such as ‘MINNESOTA CIGAR
COMPANY’ to be held primarily geographically descriptive”).
In this case, however, not only do we not have any evidence
that books and publications originate in Montecito, but we
have no specific evidence that applicant’s publications
will originate in Montecito. We add that there is also no
evidence that the public would believe that applicant’s on-
line journals and health information services originate
from applicant’s home or even some other location in
Montecito. See John Harvey & Sons, 32 USPQ2d at 1454 (“For
‘Bristol’ to be primarily geographically descriptive of
applicant's cakes, Bristol, England would have to be
associated with cakes flavored with sherry wine in such a
way that the American public would be likely to assume that
Bristol, England was the place in which these cakes
Ser. No. 77000589
13
originated”). Applicant’s blogs, providing health care
information services, and global computer websites are not
services necessarily “tied to a particular location.” 2
McCarthy on Trademarks and Unfair Competition (4th ed.
2008), §14:29. Without evidence that applicant provides
these services from a public location in Montecito, it
would be speculation on our part to reach the conclusion
that the goods or services originate there or that the
public would understand that there is a goods/place
relationship.4
We note that this case is not the same as the MCO case
where the board found that “Fountain Hills” was primarily
geographically descriptive for real estate services.
Even if the association between this place name and
the services set forth in the application would not be
assumed, despite the fact that applicant actually
renders its services there, the record here supports
that such an association is made by people in the real
estate market where applicant is using the term. That
is to say, unlike goods, which can be manufactured in
some remote or obscure location and then shipped all
over the world, real estate development services are
rendered in particular geographic areas which are
being developed. In this case, the services for which
applicant seeks to register “FOUNTAIN HILLS” are in
fact rendered in Fountain Hills.

Clearly, anyone who comes in contact with applicant's
promotional brochure (which was submitted as a

4 We add that we have no evidence that publications and services
about diets are geographically described by the home of the
author of the diet, the location of some of the participants in
the diet program, or the mailing address of the individual
author.
Ser. No. 77000589
14
specimen) will recognize the connection between the
mark “FOUNTAIN HILLS” and the name of the place where
applicant is offering its real estate development
services, Fountain Hills. The brochure is replete
with references to Fountain Hills as the town where
applicant's development services are rendered.
Examples include the following: “Fountain Hills is
home to…; it is a hometown with its own government,
school system, and a public library…. All this makes
Fountain Hills one of the most desirable communities
in Arizona…. In Fountain Hills, you can be part of a
community…. As a resident of Fountain Hills, you can
enjoy…. Come spend the day at Fountain Hills.” These
uses of the term by applicant hardly show use of
“FOUNTAIN HILLS” as an indication of the source of
applicant's real estate development services. Rather,
they evidence use of the term as the name of the place
where the services are rendered.

MCO, 38 USPQ2d at 1156.
Unlike “Fountain Hills” for real estate development
services in Fountain Hills, Arizona, there is no connection
between Montecito and applicant’s goods and services other
than applicant’s address. The limited information in this
application does not convince us that applicant’s goods or
services originate in Montecito, California, or that the
public will assume that these goods or services are from
Montecito. We find that the examining attorney has not met
his burden of showing the mark THE MONTECITO DIET is
primarily geographically descriptive for applicant’s goods
and services. Accord In re Consolidated Specialty
Restaurants, Inc., 71 USPQ2d 1921, 1924 (TTAB 2004) (“It is
well established that the USPTO has the burden of
Ser. No. 77000589
15
establishing a prima facie case that the mark is primarily
geographically deceptively misdescriptive”).

DECISION: The refusal to register applicant’s mark
for the identified goods and services is reversed.