TA Operating Corp.

Trademark Trial and Appeal Board

Jul 19, 1999

No. 75121998 (T.T.A.B. Jul. 19, 1999)

Paper No. 9
HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 19, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re TA Operating Corporation
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Serial No. 75/121,998
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Todd R. Tucker and Jeanne E. Longmuir of Calfee, Halter &
Griswold for TA Operating Corporation.
Matthew C. Kline, Trademark Examining Attorney, Law Office
104 (Sidney Moskowitz, Managing Attorney).
_______
Before Hairston, Chapman and Wendel, Administrative
Trademark Judges.
Opinion by Wendel, Administrative Trademark Judge:
TA Operating Corporation has filed an application to
register the mark TRAVELCENTERS OF AMERICA for “truck
fueling, repair and maintenance service and gasoline
service station services” in Class 37 and “restaurant
services and professional truck stop services” in Class 42.1

1 Serial No. 75/121,998, filed June 19, 1996, based on a bona
fide intention to use the mark in commerce.
Ser No. 75/121,998
2
Registration has been finally refused under Section
2(e)(2) of the Trademark Act, on the ground that the mark
is primarily geographically descriptive of the services
involved. Applicant and the Examining Attorney have filed
briefs, but no oral hearing was requested.
In order for registration to be refused under Section
2(e)(2) of the Trademark Act, on the ground that the mark
is primarily geographically descriptive of the goods or
services, it must be established that
(1) the mark sought to be registered is the name
of a place known generally to the public, and
(2) the public would make a goods/place (or
in this case, services/place) association,
i.e., would believe that the services originate
from this place.
See In re Societe Generale des Eaux Minerals de Vittel
S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); In re
California Pizza Kitchen Inc., 10 USPQ2d 1704 (TTAB 1988).
Where there is no question but that the geographic
significance of a term is its primary significance, and the
place named is neither obscure nor remote, a public
association of the goods (or services) with the place may
be presumed if, in fact, the goods (or services) originate
from the geographic place named in the mark. See In re
California Pizza Kitchen Inc., supra,; In re Handler Fenton
Westerns, Inc., 214 USPQ 848 (TTAB 1982). Moreover, the
Ser No. 75/121,998
3
addition of highly descriptive matter to a geographic term
does not detract from the mark’s primary significance as
being geographically descriptive. See In re U.S. Cargo,
Inc., 49 USPQ2d 1702 (TTAB 1998); In re Cambridge Digital
Systems, 1 USPQ2d 1659 (TTAB 1986).
In the present case, the Examining Attorney argues
that the primary significance of the term AMERICA is
geographic, indicating origin in the United States, and
that since applicant’s services originate from the United
States, a public association of the services and the place
can be presumed. He maintains that the term TRAVELCENTERS
is highly descriptive of applicant’s services and, thus,
the addition of this term does not obviate the geographic
descriptiveness of the mark as a whole. To support his
position that TRAVELCENTERS is highly descriptive of truck
stop areas and the services offered in these areas, the
Examining Attorney has made of record several excerpts from
the LEXIS/NEXIS database showing use of the term “travel
center” in reference to truck stop areas.
Applicant argues that the term TRAVELCENTERS is not
highly descriptive of its services, but rather is a term
which prospective purchasers might associate with several
different meanings, such as a travel agency, a seller of
trailers and campers, or perhaps even a campsite offering
Ser No. 75/121,998
4
hookups and the like to campers. As a result, applicant
contends that the addition of the term TRAVELCENTERS to OF
AMERICA is sufficient to remove the mark as a whole from
the geographically descriptive category. Applicant points
to its prior registration of the mark TRUCKSTOPS OF AMERICA
for similar services as evidence of applicant’s ownership
of a family of marks which should influence the
registrability of its mark TRAVELCENTERS OF AMERICA.
The word AMERICA is obviously well known to the United
States public as the name of a geographic location. The
only question is whether the addition of the term
TRAVELCENTERS is sufficient to render the mark as a whole
other than a descriptor of the geographic origin of
applicant’s services.
Looking to the evidence made of record by the
Examining Attorney, we note that several of the Nexis
excerpts show use of the term “travel center” in connection
with a specific truck stop or road side stop, as in the
following:
Truck drivers at the Pilot Travel Center off
Interstate 85 in Duncan said they like being
able to get something to eat while on the road.
(Spartanburg Herald-Journal, Sept. 8, 1996);
A few miles down the highway at Sierra Sid’s
Travel Center, the place is hopping around the
clock....with truckers playing black-jack and
wolfing down chicken-fried steak. (U. S. News
Ser No. 75/121,998
5
and World Report, Aug. 26, 1996).
While it might be argued that uses such as this are
proprietary, and fail to demonstrate generic or descriptive
use of the term, the following excerpt makes it clear that
the term “travel center” has become accepted as, at the
very least, a highly descriptive term in general use with
respect to truck stops and the services offered there:
... A sign of the times: Over the past few
years, more than a quarter of the USA’s
estimated 2,000 truck stops have changed
their names to “travel centers” or
“travel plazas.” (Asheville Citizen-Times,
June 9, 1996).
We find this more than adequate evidence that the term
TRAVELCENTERS as used by applicant in its mark is highly
descriptive of applicant’s truck stop services, as well as
the restaurant services and gasoline station services which
are often offered at such places.
While applicant argues that the term might be
interpreted differently by prospective purchasers,
applicant appears to overlook the fact that the meaning of
the term TRAVELCENTERS, as used in its mark, must be
considered in connection with applicant’s services. It is
well established that the descriptiveness of a term is not
determined in the abstract, but rather in relation to the
goods or services for which registration is being sought.
Ser No. 75/121,998
6
See In re Abcor Development Corp., 588 F.2d 811, 200 USPQ
215 (CCPA 1978); In re Home Builders Association of
Greenville, 18 USPQ2d 1313 (TTAB 1990). Thus, we cannot
agree with applicant that prospective purchasers upon
viewing the mark TRAVELCENTERS OF AMERICA, when used by
applicant in connection with its truck stop services, might
think that applicant was a travel agency, a seller of
campers or anything other than a truck stop.
Accordingly, we find the term TRAVELCENTERS to be
highly descriptive of applicant’s services and not a term
which would detract from the primary significance of the
mark TRAVELCENTERS OF AMERICA as being geographically
descriptive. The situation here is similar to that in In
re BankAmerica Corp., 231 USPQ 873 (TTAB 1986), as cited by
the Examining Attorney, wherein we found BANK OF AMERICA to
primarily signify that the applicant’s financial services
originated from an American bank or from a bank in the
United States. Here the mark TRAVELCENTERS OF AMERICA
primarily indicates that applicant’s truck stop and related
services originate in the United States.
Insofar as applicant’s existing registration for
TRUCKSTOPS OF AMERICA is concerned, we can only point out
that the registered mark is not the same mark and the fact
that that mark was allowed to register on the Principal
Ser No. 75/121,998
7
Register with only a disclaimer of TRUCKSTOPS is not
binding upon us in the present case. See In re National
Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984).
Furthermore, we fail to see how applicant can claim
ownership of a family of marks based on use of one prior
mark.
Decision: The refusal to register under Section
2(e)(2) is affirmed.2
P. T. Hairston
B. A. Chapman
H. R. Wendel
Trademark Administrative Judges,
Trademark Trial and Appeal Board

2 While applicant has requested, in the alternative, that its
mark be registered on the Supplemental Register, the Examining
Attorney was entirely correct in pointing out that a mark in an
application filed under Section 1(b) is not eligible for
registration on the Supplemental Register until either an
amendment to allege use or a statement of use has been filed,
since there must have been lawful use of the mark in commerce.
See Section 23 of the Trademark Act; 37 CFR 2.47(c).