Sommer

Trademark Trial and Appeal Board

Jun 25, 1998

No. 75005016 (T.T.A.B. Jun. 25, 1998)

Paper No. 10
JQ
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 6/25/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Sommer
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Serial No. 75/005,016
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John M. Keene of Graham, Campaign for applicant.
Ellen Awrich, Trademark Examining Attorney, Law Office 109
(Deborah S. Cohn, Managing Attorney).
_______
Before Seeherman, Quinn and Walters, Administrative
Trademark Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Sommer, a French joint
stock company, to register the mark FRENCH-COURT for “clay
court surface material for tennis courts.”1
The Trademark Examining Attorney has refused
registration under Section 2(e)(2) of the Trademark Act on
the ground that applicant’s mark, if applied to applicant’s
goods, would be primarily geographically descriptive of
them.
Ser No. 75/005,016
2
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs.2 An
oral hearing was not requested.
Applicant concedes that the term FRENCH is the
adjectival form of the word FRANCE, and that the latter term
is the name of a country that is well known to the people of
the United States. Applicant also acknowledges that its
goods originate in France. However, applicant argues, in
urging that the refusal be reversed, that the mark is
suggestive of the nature or quality of the goods rather than
describing the geographic origin of the goods. In this
connection, applicant contends that the mark suggests “that
the goods are clay tennis court surfacing materials of a
quality equal to those which Americans are used to seeing in
televised highlights from the annual French Open tennis
tournament.” (brief, p. 8) In addition to the common
knowledge that the French Open is the only annual tennis
event that is played exclusively on clay courts, applicant
asserts that clay courts are commonplace throughout Europe.

1 Application Serial No. 75/005,016, filed October 13, 1995,
alleging a bona fide intention to use the mark in commerce.
2 Applicant attached an exhibit to its brief. The Examining
Attorney, in her brief, objected to this late submission.
Trademark Rule 2.142(d) provides that the record in the
application should be complete prior to the filing of an appeal
and that the Board will ordinarily not consider additional
evidence filed with the Board after the appeal is filed.
Inasmuch as the exhibit was filed late, the Examining Attorney’s
objection is well taken and we have not considered the exhibit in
reaching our decision. We hasten to add that even if the exhibit
were considered, we would reach the same result in this case.
Ser No. 75/005,016
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Applicant also contends that the nature of the goods
involved here will require consumers, upon encountering
applicant’s mark, to engage in a more complex thought
process, making them less likely to immediately discern the
primary geographic significance of the mark. This,
according to applicant, is to be contrasted with simple or
prepackaged goods which are easily and quickly transported
in commerce, such that consumers would immediately glean the
primary geographic significance of marks used on those
goods. Applicant asks that any doubt in this appeal be
resolved in its favor in accordance with existing case law.
The Examining Attorney contends that the term “FRENCH”
is equivalent to “FRANCE” for purposes of the Section
2(e)(2) analysis, that France is generally known to the
public as a geographic location, and that a goods/place
association is presumed from the fact that applicant’s goods
come from France. In support of the refusal, the Examining
Attorney submitted dictionary listings for the terms
“French” and “court,” as well as excerpts retrieved from the
NEXIS database bearing on France’s notoriety for its clay
tennis courts. The Examining Attorney addresses in detail
each of applicant’s arguments, maintaining that the refusal
to register should be affirmed.
In order for registration to be properly refused under
Section 2(e)(2), it is necessary to show that (i) the mark
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sought to be registered is the name of a place known
generally to the public, and that (ii) the public would make
a goods/place association, that is, believe that the goods
for which the mark is sought to be registered originate in
that place. See: In re California Pizza Kitchen, Inc., 10
USPQ2d 1704 (TTAB 1988), citing In re Societe Generale des
Eaux Minerales de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450
(Fed. Cir. 1987). Where 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. See: In re Handler Fenton Westerns, Inc., 214
USPQ 848 (TTAB 1982).
The term “French,” as defined in Webster’s Ninth New
Collegiate Dictionary, means “of, relating to, or
characteristic of France, its people, or their language.”
The term “court,” as defined in the same dictionary, means
“a quadrangular space walled or marked off for playing one
of various games with a ball (as lawn tennis, handball, or
basketball) or a division of such a court.”
As noted above, applicant concedes that “the term
FRENCH is the adjective of the word FRANCE, and that the
latter is the name of a country that is well-known to the
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people of the United States....” (brief, p. 2) Indeed, we
have no doubt that the primary significance of the term
“FRENCH” in applicant’s mark is geographical and that France
is neither an obscure nor a remote geographical place. See
In re Compagnie Generale Maritime, 993 F.2d 841, 26 USPQ2d
1652 (Fed. Cir. 1993)[FRENCH LINE, for a wide variety of
goods and services, is primarily geographically descriptive
or primarily geographically deceptively misdescriptive
depending on whether or not the goods and services came from
France].
In addition, applicant is located in France and
applicant “does not dispute the fact that its goods
originate in France.” (brief, p. 6) Thus, a goods/place
association may be presumed in this case. However, an even
stronger case of a goods/place association is established by
the evidence of record here. The NEXIS articles provided by
the Examining Attorney show that clay tennis courts are
associated with France, and that the French Open, one of the
major tennis tournaments in the world, is played on clay
courts.
The mere addition of the highly descriptive/generic
word “COURT” does not detract from the primary significance
of FRENCH-COURT when the mark is considered as a whole. In
re Chalk’s International Airlines Inc., 21 USPQ2d 1637, 1639
(TTAB 1991). Further, as the Board has stated in the past,
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the determination of registrability under Section 2(e)(2)
should not depend on whether the mark is unitary or
composite. In re Cambridge Digital Systems, 1 USPQ2d 1659,
1662 (TTAB 1986).
We have considered applicant’s other arguments, but
find them to be entirely unpersuasive for the reasons
essentially given by the Examining Attorney. We fully agree
with the Examining Attorney’s rationale in distinguishing
the present case from the case principally relied upon by
applicant, In re John Harvey & Sons Ltd., 32 USPQ2d 1451
(TTAB 1994).
We conclude that purchasers are likely to believe that
FRENCH-COURT is primarily geographically descriptive in that
it identifies the geographic source of applicant’s clay
court surface material for tennis courts.
Decision: The refusal to register is affirmed.
E. J. Seeherman
T. J. Quinn
C. E. Walters
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
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