Style Asia Inc.

Trademark Trial and Appeal Board

Dec 3, 2008

No. 78885852 (T.T.A.B. Dec. 3, 2008)

Mailed:
December 3, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Style Asia Inc.
________

Serial No. 78885852
_______

Myron Amer, of Myron Amer, P.C. for Style Asia Inc.

Bernice Middleton, Trademark Examining Attorney, Law Office
106 (Mary Sparrow, Managing Attorney).
_______

Before Holtzman, Zervas and Mermelstein, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

Style Asia Inc. filed, on May 17, 2006, an application
to register on the Principal Register the mark

for goods in several International Classes including
International Class 14, with the International Class 14
THIS OPINION IS
NOT A PRECEDENT
OF THE T.T.A.B.
Ser. No. 78885852
2
goods ultimately identified as “watches and clocks.”1 The
application is based on Trademark Act Section 1(a), 15
U.S.C. §1051(a), and asserts first use anywhere and first
use in commerce on January 9, 2006 for the International
Class 14 goods. Applicant has disclaimed the word SWISS.
The colors red, white and black are claimed as a feature of
the mark.
The examining attorney has issued a final refusal to
register the International Class 14 goods on the grounds
(i) that applicant has failed to comply with her request
for information under Trademark Rule 2.61(b), 37 C.F.R.
§2.61(b); and (ii) that the mark is primarily
geographically deceptively misdescriptive of the goods and
thus unregistrable under Trademark Act Section 2(e)(3), 15
U.S.C. §1052(e)(3).
Applicant has appealed the final refusal. Both
applicant and the examining attorney have filed briefs. We
affirm the refusal to register on both grounds.
We turn first to the refusal pursuant to Trademark
Rule 2.61(b). That rule provides that “[t]he examiner may
require the applicant to furnish such information and
exhibits as may be reasonably necessary to the proper

1 Applicant also seeks registration for goods in International
Classes 8, 9, 16 and 18.
Ser. No. 78885852
3
examination of the application.” If an applicant fails to
comply with the examining attorney’s requirement under
Trademark Rule 2.61(b), registration of applicant's mark
may be refused on that basis. See In re DTI Partnership
LLP, 67 USPQ2d 1699 (TTAB 2003).
In each of her Office actions, the examining attorney
required applicant to provide information regarding the
geographic origin of applicant's goods. In her initial and
final Office actions, the examining attorney stated:
“Applicant must specifically state whether its goods are or
will be manufactured, produced or sold in, or have any
other connection with, the geographic place named in the
mark.” In its responses to the first two Office actions,
applicant did not even acknowledge the requirement and did
not comply with it.
In its first request for reconsideration, however,
applicant stated, “[t]he goods identified by the mark [are]
imported from Switzerland.” The examining attorney
responded that “[t]he importation location does not address
the origin of the goods” and “Applicant should indicat[e]
whether the goods are manufactured or produced in
Switzerland,” and continued her requirement for additional
information.
Ser. No. 78885852
4
Applicant then filed a second request for
reconsideration in which applicant stated as follows,
limiting its comments to the goods in International Class
8, which were also the subject of the final refusal at that
time:
Please note of record [sic] that applicant's
SWISS MANICURE SETS originate in Switzerland, but
it is not known if said goods are manufactured or
produced in Switzerland. It is more accurate to
say that said goods are available for sale in
Switzerland, and that applicant is a purchaser of
such goods.

(Capitalization in the original.) After this statement,
the examining attorney did not continue her refusals
regarding the International Class 8 goods. She did,
however, deny the request for reconsideration as it
pertained to the International Class 14 goods and continued
the Rule 2.61(b) and Section 2(e)(3) refusals, noting that
“[n]o statement was made regarding the Class 014 watches
and clocks”.
Applicant, in its appeal brief, did not acknowledge
the requirement for additional information with respect to
the International Class 14 goods but merely pointed out
that it had responded to the examining attorney’s
information requirement with respect to “Swiss Manicure
Sets” in International Class 8. Brief at p. 1. Applicant
Ser. No. 78885852
5
did not address the information requirement in its reply
brief at all.
We find that the examining attorney’s requirement for
information was proper under Trademark Rule 2.61(b). Such
information is directly relevant to the issue of whether
the goods do not or will not originate in the place named
and thus “may be reasonably necessary to the proper
examination of the application,” as required by the rule.
Applicant has not contended otherwise.
We also find that applicant has failed to comply with
the examining attorney’s Trademark Rule 2.61(b)
requirement. After ignoring the examining attorney’s
requirement in its first and second responses, applicant
offered the indefinite response that “[t]he goods
identified by the mark [are] imported from Switzerland.”2
It does appear to us that applicant has avoided making a
complete response. After the examining attorney informed
applicant that its response was not sufficient, applicant
ignored the examining attorney’s requirement as it pertains
to its International Class 14 goods in the three succeeding
papers applicant filed. Applicant has not asserted that
its response as it pertains to the International Class 14

2 We interpret applicant’s statement as encompassing the
situation where the goods travel through Switzerland to the
Ser. No. 78885852
6
goods was sufficient, even in its briefs. Thus,
applicant's noncompliance with the examining attorney’s
requirement under Trademark Rule 2.61(b) warrants rejection
of the application.
We turn now to the merits of the examining attorney’s
Section 2(e)(3) refusal.3 This refusal is proper if (i) the
primary significance of the mark is the name of a
generally-known geographic place, (ii) the applicant's
goods do not or will not originate in the place named,
(iii) purchasers would be likely to believe that the goods
originate in the place named (i.e., that a good/place
association exists), and (iv) the misrepresentation as to
the geographic origin of the goods is or would be a
material factor in the purchaser's decision to purchase the
goods. In re California Innovations Inc., 329 F.3d 1334,
66 USPQ2d 1853 (Fed. Cir. 2003); In re South Park Cigar,
Inc., 82 USPQ2d 1507 (TTAB 2007).

United States. Goods may pass through several countries when
imported to the United States.
3 The examining attorney has also refused registration under
Section 2(a) of the Trademark Act. Because applicant's mark
involves an allegedly deceptive geographic designation, the
pertinent ground for refusal in this case is that the mark is
primarily geographically deceptively misdescriptive under Section
2(e)(3), and not that the mark is deceptive under Section 2(a).
See In re California Innovations Inc., 329 F.3d 1334, 66 USPQ2d
1853 (Fed. Cir. 2003).

Ser. No. 78885852
7
The examining attorney has made of record evidence
that establishes the following facts which have not been
contested by the applicant. First, the examining attorney
has shown through her submission from the Encarta World
English Dictionary that the SWISS portion of applicant's
mark is an adjective that means “of Switzerland: relating
to Switzerland, or to its peoples or cultures.” Second,
the examining attorney has established that Switzerland is
one of the world's leading manufacturers of higher-quality
watches and clocks. Third, the examining attorney has
established that Switzerland is world-renowned for its
high-quality watches and clocks. Because applicant has
never challenged any of the foregoing facts established by
the examining attorney, we do not set forth in this opinion
the evidence that the examining attorney has submitted to
establish these facts. We also find that the examining
attorney has set forth sufficient evidence to establish
factors (i), (iii) and (vi).4

4 Applicant has made an argument for the first time at pp. 1 - 2
of its reply brief regarding an absence of deception. It states
that there is no deception in view of a “nexus between … two
events,” with one event being “a ‘watch/clock’ in a point-of-
sales display, and the second event [being] the mental
association fostered by the word CONNECTION.” To the extent we
understand this argument, we do not find it to be persuasive.
The term SWISS is in the mark, and the term has geographic
significance.

Ser. No. 78885852
8
As for factor (ii), whether applicant's goods do not
or will not originate in the place named, the record
reflects that applicant is a New York corporation with a
New Jersey address. As noted above, the examining attorney
in her first and final Office actions required applicant to
specifically state “whether its goods are or will be
manufactured, produced or sold in, or have any other
connection with, the geographic place named in the mark.”
Applicant ignored the examining attorney’s requirement but
then eventually stated in its first request for
reconsideration, “the goods identified by the mark [are]
imported from Switzerland.” The examining attorney found
this to be an insufficient response.
The Board’s recent decision in In re Cheeswhse.com,
Inc., 85 USPQ2d 1917 (TTAB 2008) is instructive. In
Cheeswhse.com, “despite repeated requests and reminders,
applicant did not comply with or even acknowledge the
Trademark Examining Attorney’s requirement for
information.” Id. at 1919. Accordingly, the Board found
that a presumption exists that the goods are not from the
geographic area identified in the mark when the applicant
failed to comply with the examining attorney’s Rule 2.61(b)
requirement for information regarding the geographic origin
of applicant's goods. The Board stated that “[i]n such
Ser. No. 78885852
9
circumstances, we deem it appropriate to presume, for
purposes of this Section 2(e)(3) refusal … that applicant's
cheese in fact will not originate in or from Normandy,
France. The third element of the Section 2(e)(3) refusal
therefore is established.” In the present appeal, we
similarly find that applicant’s failure (i) to respond to
the examining attorney’s inquiries in the first two Office
actions, (ii) to challenge the examining attorney’s
contention that the importation location does not address
the origin of the goods, and (iii) to address the origin of
the International Class 14 goods in its briefs, as well as
its unclear statement that the goods are “imported from
Switzerland,” raises the presumption that the goods do not
originate in Switzerland. The third element of the Section
2(e)(3) refusal therefore is established.
Thus, we find that the evidence of record establishes
each element of the alternative Section 2(e)(3) refusal.
The primary significance of the mark is the name of a
generally-known geographic location, i.e., Switzerland. A
goods/place association exists between watches and clocks,
and Switzerland. Applicant's goods do not or will not
originate in or from Switzerland. The mark's
misrepresentation of the geographic origin of the goods is
or would be material to the decision to purchase the goods.
Ser. No. 78885852
10
We therefore conclude that applicant's mark is primarily
geographically deceptively misdescriptive of “watches and
clocks,” and that applicant's mark accordingly is
unregistrable under Trademark Act Section 2(e)(3).
In summary, we affirm the examining attorney’s refusal
to register on both stated grounds. First, we affirm the
refusal to register which is based on applicant's failure
to comply with the examining attorney’s proper Rule 2.61(b)
requirement for information as to the geographic origin of
applicant's goods. Second, based on our presumption that
applicant's goods do not or will not originate in or from
the place named in the mark, we find that applicant's mark
is primarily geographically deceptively misdescriptive of
applicant's goods, and therefore affirm the Section 2(e)(3)
refusal.
Decision: The refusal to register as to Class 14 is
affirmed on both grounds. The application will proceed in
International Classes 8, 9, 16 and 18.