SMJ Group, Inc.

Trademark Trial and Appeal Board

Feb 29, 2000

No. 75052422 (T.T.A.B. Feb. 29, 2000)

Hearing: Paper No. 24
June 29, 1999 TJQ
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB FEB. 29, 00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re SMJ Group, Inc.
________
Serial Nos. 75/026,413; 75/026,414; and 75/052,422
_______
William M. Ried and Kim A. Walker of Willkie Farr &
Gallagher for applicant.
K. Margaret Le, Trademark Examining Attorney, Law Office
103 (Michael Szoke, Managing Attorney).
_______
Before Hanak, Quinn and Bottorff, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
Applications have been filed to register the mark
BROOKLYN DINER USA – THE FINER DINER and the marks shown
below
Ser Nos. 75/026,413; 75/026,414; and 75/052,422
2
all for “restaurant services.”1
The Trademark Examining Attorney has refused
registration in each application under Section 2(e)(3) of
the Trademark Act on the ground that the mark, when used in
connection with the services, is primarily geographically
deceptively misdescriptive of them.
When the refusals to register were made final,
applicant appealed. Applicant and the Examining Attorney
filed briefs,2 and a consolidated oral hearing was held
before the Board. Because of the essentially identical
issues involved in these three appeals, the Board shall
explain our decisions in these cases in one opinion.
In order for a mark to be primarily geographically
deceptively misdescriptive, the mark must (1)have as its
primary significance a generally known geographic place,

1 Respectively, application Serial No. 75/026,414, filed November
29, 1995, alleging dates of first use of November 15, 1995;
application Serial No. 75/026,413, filed November 29, 1995,
alleging dates of first use of November 15, 1995; and application
Serial No. 75/052,422, filed February 2, 1996, alleging dates of
first use of September 1, 1995. All of the applications include
disclaimers of the terms “USA,” “Finer” and “Diner.” The
applications to register the composite marks include statements
that the lining and stippling are features of the marks and are
not intended to indicate color. It is noted that applicant owns
another application, Serial No. 74/694,837, which is on appeal
but currently under suspension pending a final determination in
these appeals.
2 The briefs include supplemental briefs which were allowed by
the Board.
Ser Nos. 75/026,413; 75/026,414; and 75/052,422
3
and (2)identify services that purchasers are likely to
believe mistakenly are connected with that location, that
is, purchasers would make a services/place association. In
re Wada, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999); In
re Societe Generale des Eaux Minerals de Vittel S.A., 824
F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); In re Loew’s
Theaters, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir.
1985); and In re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889
(CCPA 1982).
In support of her prima facie case, the Examining
Attorney offered evidence to show that Brooklyn is a place
that is neither obscure nor remote, and that restaurants,
including diners, are located in Brooklyn. In particular,
the Examining Attorney introduced a listing for “Brooklyn”
in Webster’s New Geographical Dictionary (1984) and The
American Heritage Dictionary of the English Language (3d
ed. 1992). This evidence shows that Brooklyn is a borough
of New York City with a population exceeding two million.
The Examining Attorney also introduced excerpts retrieved
from the NEXIS database and telephone directories to show
that restaurants and, specifically, diners are located in
Ser Nos. 75/026,413; 75/026,414; and 75/052,422
4
Brooklyn.3 The Examining Attorney maintains that the
evidence shows “that diners located in Brooklyn exist in
sufficient number to cause a consumer to believe that the
mark BROOKLYN DINER identifies a diner in Brooklyn.”
(appeal brief, p. 5)
Applicant readily acknowledges that “Brooklyn” is
primarily a geographic term and that applicant’s services
do not originate in Brooklyn. Thus, applicant focuses, as
has the Examining Attorney, on the central issue in these
cases: whether the public would believe that the
restaurant services for which the marks are sought to be
registered originate in the geographic place named in the
mark when, in fact, the services do not originate in that
geographic place. In connection with this central issue of
a services/place association, applicant has submitted the
declarations of Robert A. Rosenberg, an attorney at the law
firm representing applicant in the involved applications.
The declarations are accompanied by numerous documents.
These materials include the following: a reference to

3 Applicant rightly has criticized some of the NEXIS excerpts
introduced by the Examining Attorney. As pointed out by
applicant, some of the articles are duplicative, and many are
written about just three Brooklyn restaurants (Gage and Tollner,
Junior’s and Nathan’s). Further, some of the other articles
clearly are inapplicable to the issue in this case (see, for
example, the one regarding a restaurant located on Brooklyn
Avenue in Kansas City, Missouri).
Ser Nos. 75/026,413; 75/026,414; and 75/052,422
5
“Brooklyn” as the “City of Homes” and the “Borough of
Churches” in The Columbia Lippincott Gazetteer of the World
(1962); a reference to “Brooklyn” in Names & Nicknames of
Places & Things (1987) and in The World Almanac (1994);
excerpts from the Brooklyn Yellow Pages which highlight
historical sights and landmarks, none of which are
restaurants or diners; an entry for “Brooklyn” in Webster’s
New Geographical Dictionary (1984) listing the various
industries of Brooklyn, with no mention of the restaurant
trade or diners; excerpts from a book, American Diner:
Then and Now (1993) about diners in the United States,
referring to nine diners located in Brooklyn in its
directory of 1,291 diners in this country; excerpts
retrieved from the NEXIS database showing that the terms
“diner” and “restaurant” are cited more frequently in
connection with geographic locations other than Brooklyn
(such as New York, New Jersey and Los Angeles); nine third-
party registrations and nine third-party applications for
marks which include, as a portion thereof, the terms
“Brooklyn,” “Bronx,” or “Manhattan;” file wrappers for two
of these registrations; copies of registrations of
applicant’s marks issued in Mexico, and a document
indicating that at least one of applicant’s marks has been
approved in Canada; excerpts from printed publications,
Ser Nos. 75/026,413; 75/026,414; and 75/052,422
6
including travel guides, which refer to applicant’s
restaurant, with one article about the opening of several
“theme” restaurants (including applicant’s) on West 57th
Street in Manhattan; and a menu from applicant’s restaurant
and menus from other diners. Mr. Rosenberg also has
described, based on his personal visit, the décor of
applicant’s restaurant: “I observed prominent photographs
of the beach at Coney Island, the Brooklyn Bridge and the
Cyclone Roller Coaster on the Coney Island boardwalk, and a
large mural of the Brooklyn Dodgers playing at Ebbets
Field...I also noted it is furnished with un-diner like
materials such as dark wood, and contains a wine bar that
serves 20 California, Italian, French and Australian wines
by the glass.”
The Examining Attorney maintains that restaurants and,
in particular, diners exist in sufficient number in
Brooklyn that consumers, upon encountering applicant’s
mark, would make a services/place association, mistakenly
so in the present cases.
Applicant, contends, on the other hand, that the
record does not support a services/place association.
Applicant asserts that its evidence shows that Brooklyn is
not known for restaurants and diners “beyond what is
virtually universal for cosmopolitan centers.” (brief, pp.
Ser Nos. 75/026,413; 75/026,414; and 75/052,422
7
4-5) Applicant goes on to argue that the marks “convey
nostalgic overtones of the common past of all Americans,” a
theme which is carried out, according to applicant, by the
restaurant’s décor (with photographs of Brooklyn
landmarks). In arguing the merits of its position in
supplemental briefs, applicant places significant reliance
on the Board’s recent decision in the case of In re
Municipal Capital Markets Corp., 51 USPQ2d 1369 (TTAB 1999)
wherein the Board found the designation COOPERSTOWN to be
not primarily geographically deceptively misdescriptive for
restaurants which are not located in Cooperstown, New York.
Based on the record before us in this appeal, we find
that it is reasonable to assume that consumers encountering
applicant’s BROOKLYN DINER marks will mistakenly believe
that the restaurant services have their origin in Brooklyn
or are otherwise connected with Brooklyn. We acknowledge
that restaurant services are “ubiquitous” and that the
Board, in In re Municipal Capital Markets Corp., supra, has
stated that “the Examining Attorney must present evidence
that does something more than merely establish that
services as ubiquitous as restaurant services are offered
in the pertinent geographic location.” We find that the
instant record satisfies the test.
Ser Nos. 75/026,413; 75/026,414; and 75/052,422
8
We note that the décor of applicant’s restaurant
includes photographs of the Brooklyn Bridge, Coney Island
and the Brooklyn Dodgers at Ebbets Field.4 See: In re
Municipal Capital Markets Corp., supra at 1372 (J. Simms,
concurring) Of particular importance in this case is
applicant’s menu. Although applicant, in connection with
its “theme” arguments, has pointed to other language in the
menu, conspicuously overlooked by both applicant and the
Examining Attorney is the following language on the back of
the menu:
Where does Brooklyn fit in? Well,
Brooklyn is--and always has been--the
ultimate melting pot in America. And
so it was the logical place to turn
when we began our search more than two
years ago, for the ultimate “American
ethnic” recipes. We spent nearly two
years digging into Brooklyn’s
incredibly rich and diverse culinary
past (and we found ourselves on several
occasions getting recipes from old-
timers who live now in Brooklyn nursing
homes); and we spent months upon months
(and continue to do so) putting those
recipes to the test. And while we’ve
taken a few liberties (as you can see
from the menu), we’ve gone to extreme
lengths to remain faithful to this
important--and too often neglected--
culinary tradition. (emphasis added)

4 We also would note the stylization of the term “Brooklyn” in
applicant’s composite marks is reminiscent of that used by the
old Brooklyn Dodgers baseball team.
Ser Nos. 75/026,413; 75/026,414; and 75/052,422
9
In the next paragraph, the menu indicates that the borough
of Brooklyn has been “the culinary inspiration for our
restaurant.” (emphasis in original)
The reference, in applicant’s own words, to
“Brooklyn’s incredibly rich and diverse culinary past”
seriously undermines applicant’s contention that consumers
would not associate its restaurant services with Brooklyn.
To be clear, we are not finding that the Examining Attorney
has shown that Brooklyn is noted for its restaurants or
cuisine (which she is not required to do). Rather, we find
that applicant’s own words in its menu, coupled with the
décor of the restaurant, present “that something more” to
establish a services/place association. Thus, we conclude
that the public would mistakenly believe that applicant’s
restaurant services rendered under applicant’s marks
originate in Brooklyn. See: In re California Pizza
Kitchen Inc., 10 USPQ2d 1704 (TTAB 1989).
In making our decision, we recognize, of course, that
applicant’s marks include more than just the word
“BROOKLYN.” Our view, however, is that each of the marks,
when viewed in its entirety, projects a primarily
geographic significance, with the addition of the other
wording not detracting in the least from this primary
geographic significance of the mark. If anything, as
Ser Nos. 75/026,413; 75/026,414; and 75/052,422
10
pointed out by the Examining Attorney, the inclusion of the
term “USA” in each of the marks reinforces the primary
geographic significance of the mark as a whole. Applicant
has not provided any facts, and indeed, has not even argued
that the primary geographic significance of the mark is
lost by the addition of the other words and/or design. The
determination of registrability under Section 2(e)(3)
should not depend on whether the mark is unitary or
composite. In re Wada, supra at 1540-41; and In re
Cambridge Digital Systems, 1 USPQ2d 1659, 1662 (TTAB 1986).
See also: In re Nantucket Inc., supra, at 893, n. 7; and
In re Handler Fenton Westerns, Inc., 214 USPQ 448 (TTAB
1982).
Two other points raised by applicant require mention.
First, applicant has relied upon several third-party
registrations and applications for marks which include
geographic terms such as “Brooklyn,” “Manhattan” and
“Bronx.” Applicant asserts that the Office’s approvals of
these marks “illustrate the need for the Trademark Office
to treat similarly situated applicants under the same rules
and requirements in the same manner.” (brief, p. 10)
Suffice it to say, this evidence is of little help in
determining the registrability of the marks at issue in
this case. As often noted by the Board, each case must be
Ser Nos. 75/026,413; 75/026,414; and 75/052,422
11
decided on its own set of facts, and we are not privy to
the facts involved with these registrations and
applications. While uniform treatment under the Trademark
Act is highly desirable, our task here is to determine,
based upon the record before us, whether applicant’s marks
are registrable.
Second, applicant relies upon the fact that it has
obtained registrations for its marks in Mexico, and that
its marks have been passed to publication in Canada.
Applicant argues that “[t]he United States should recognize
the actions taken by both its NAFTA (The North American
Free Trade Enactment Act) treaty partners and pass
applicant’s mark to publication” and that, to hold
otherwise, “the Examining Attorney would afford United
States citizens less protection in their own country than
they receive in other treaty countries.” (brief, p. 14)
Simply put, these registrations and applications, examined
under trademark rules and precedential case law different
from that in the United States, are irrelevant to our
analysis. In re John Harvey & Sons Ltd., 32 USPQ2d 1451,
1453 n. 5 (TTAB 1994).
Ser Nos. 75/026,413; 75/026,414; and 75/052,422
12
Decision: The refusal in to register is affirmed in
each instance.
E. W. Hanak
T. J. Quinn
C. M. Bottorff
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
Ser Nos. 75/026,413; 75/026,414; and 75/052,422
13