The American Waffle Company LLC

Trademark Trial and Appeal Board

Jan 12, 2016

No. 85768317 (T.T.A.B. Jan. 12, 2016)

This Opinion is Not a
Precedent of the TTAB

Hearing: December 3, 2015
Mailed: January 12, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re The American Waffle Company LLC
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Serial No. 85768317
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Timothy D. Pecsenye of Blank Rome LL for The American Waffle Company LLC.

Kristin Dahling, Trademark Examining Attorney, Law Office 105,
Susan Hayash, Managing Attorney.
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Before Kuhlke, Taylor and Goodman, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
The American Waffle Company LLC (Applicant) seeks registration on the
Principal Register of the standard character mark THE AMERICAN WAFFLE
COMPANY (with the wording WAFFLE COMPANY disclaimed) for “pancakes;
waffles,” in International Class 30.1
1 Application Serial No. 85768317, filed on October 31, 2012, based upon Applicant’s
allegation of first use and first use in commerce on September 17, 2012 under Section 1(a)
of the Trademark Act, 15 U.S.C. § 1051(a). Applicant amended the application to include
the disclaimer for the wording “WAFFLE COMPANY” in response to the initial refusal
based on mere descriptiveness under Section 2(e)(1).

Serial No. 85768317
The Trademark Examining Attorney has refused registration of Applicant’s
mark on the ground that THE AMERICAN WAFFLE COMPANY is primarily
geographically descriptive of Applicant’s goods under Section 2(e)(2) of the
Trademark Act, 15 U.S.C. § 1052(e)(2).
When the refusal was made final, Applicant appealed. The Examining Attorney
and Applicant filed briefs. An oral hearing was held on December 3, 2015. We affirm
the refusal to register.
Procedural History
By way of background, the Examining Attorney initially refused registration on
the ground of mere descriptiveness under Section 2(e)(1) of the Trademark Act, 15
U.S.C. § 1052(e)(1). After Applicant appealed and requested reconsideration of the
final refusal on that ground, the Examining Attorney withdrew that refusal but
issued the refusal before us on appeal, i.e., on the ground that the proposed mark is
primarily geographically descriptive under Section 2(e)(2). Once that refusal was
made final, the appeal was resumed and briefs were filed.
Applicant argues the issuance and subsequent withdrawal of the mere
descriptiveness refusal supports a finding that the primary significance of the
proposed mark is not a generally known location. Specifically, Applicant contends:
The Examining Attorney did not even raise the
association between Applicant’s mark and the geographic
location of Applicant’s goods as a basis for refusing
registration until [her] third Office Action, after Applicant
initiated the instant appeal and after Applicant
voluntarily disclaimed an exclusive right to use WAFFLE
COMPANY apart from the mark as shown. The lack of
immediacy of this issue for the Examining Attorney
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Serial No. 85768317
undercuts [her] claim that the primary significance of
Applicant’s mark is now the geographic location. If this
were truly the case, the Examining Attorney would have
immediately perceived the geographic significance and
raised this issue in [her] first or second, not [her] third,
Office Action.
App. Br., 7 TTABVUE 12 (citation omitted) (emphasis in original).
Examining attorneys may issue refusals under different parts of the statute, and
although complete examination upon initial review is the goal, where a refusal that
was not initially issued but must be made in order to prevent the issuance of a
registration that would violate the Trademark Act, the subsequent refusal must be
issued. TMEP § 706.1 (October 2015). Marks that contain geographic terms for use
in connection with food or restaurant services may fall on the side of mere
descriptiveness (is it a type of cuisine) or geographic descriptiveness (does it
indicate origin) depending on the circumstances. See TMEP § 1210.02(b)(iii). In
some circumstances, an examining attorney may refuse registration on both
grounds, in the alternative. Id. In this case, the Examining Attorney ultimately
determined that the geographic term AMERICAN indicates origin, not a type of
waffle, and issued the geographic descriptiveness refusal. This process of
examination does not serve to detract from the evidence that supports a finding as
to the primary significance of the term.
Primarily Geographically Descriptive Refusal
The test for determining whether a term is primarily geographically descriptive
is whether (1) the primary significance of the term in the mark sought to be
registered is the name of a place generally known to the public, (2) the public would
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Serial No. 85768317
make an association between the goods or services and the place named in the
mark, that is, believe that the goods or services for which the mark is sought to be
registered originate in that place, and (3) the source of the goods or services is the
geographic region named in the mark. In re Newbridge Cutlery Co., 776 F.3d 854,
113 USPQ2d 1445, 1448-9 (Fed. Cir. 2015). See also In re Societe Generale des Eaux
Minerals de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); In re JT
Tobacconists, 59 USPQ2d 1080 (TTAB 2001); University Book Store v. University of
Wisconsin Board of Regents, 33 USPQ2d 1385 (TTAB 1994); and In re California
Pizza Kitchen, Inc., 10 USPQ2d 1704 (TTAB 1988). When the geographic
significance of a term is its primary significance and the geographic place is neither
obscure nor remote, for purposes of Section 2(e)(2), the goods/place or services/place
association may ordinarily be presumed from the fact that the goods or services
originate in or near the place named in the mark. In re Spirits of New Merced, LLC,
85 USPQ2d 1614, 1621 (TTAB 2007) (“[S]ince the goods originate at or near
[Yosemite National Park], we can presume an association of applicant’s beer with
the park.”). See also In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998).
Finally, “the presence of generic or highly descriptive terms in a mark which also
contains a primarily geographically descriptive term does not serve to detract from
the primary geographical significance of the mark as a whole.” In re Cheezwhse.com,
Inc., 85 USPQ2d 1917 (TTAB 2008) (NORMANDIE CAMEMBERT with
CAMEMBERT disclaimed, held primarily geographically descriptive for cheese, and
the Board presumed that the goods would originate there because applicant failed
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Serial No. 85768317
to submit information about the origin of the goods); JT Tobacconists, 59 USPQ2d
at 1082 (MINNESOTA CIGAR COMPANY primarily geographically descriptive of
cigars from Minnesota).
When determining whether a mark that contains the words AMERICA or
AMERICAN is primarily geographically descriptive, the entire context should be
considered, in particular the overall commercial impression of the mark. TMEP §
1210.02(b)(iv). If it is used in a way that primarily denotes the United States as the
origin of the goods or services, then the term is primarily geographically descriptive.
See American Diabetes Ass’n, Inc., v. National Diabetes Ass’n, 533 F. Supp. 16, 214
USPQ 231 (E.D. Pa. 1981), aff’d, 681 F.2d 804 (3d Cir. 1982). Conversely, if
AMERICA or AMERICAN is used in a nebulous or suggestive manner unrelated to
geographic origin then it is not primarily geographically descriptive. See Hamilton-
Brown Shoe Co. v. Wolf Bros. & Co., 240 US 251 (1916) (THE AMERICAN GIRL
held not primarily geographically descriptive for shoes); In re Jim Crockett
Promotions Inc., 5 USPQ2d 1455 (TTAB 1987) (THE GREAT AMERICAN BASH
held not primarily geographically descriptive of wrestling exhibitions).
In support of her position that THE AMERICAN WAFFLE COMPANY is
primarily geographically descriptive of the applied-for goods, the Examining
Attorney submitted evidence pertaining to the meaning of the individual terms,
third-party registrations for marks that include the word AMERICAN and evidence
showing Applicant’s location in the United States.
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Serial No. 85768317
With regard to meaning, the Examining Attorney relies on the following
dictionary definitions:
AMERICAN: of or relating to the United States of
America or its people, language, or culture;2
WAFFLE: a crisp cake of batter baked in a waffle iron;3
and
COMPANY: a business organization that makes, buys, or
sells goods or provides services in exchange for money.4
The third-party registrations show marks with AMERICAN registered on the
Supplemental Register, or on the Principal Register, based on acquired
distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), or with
the word AMERICAN disclaimed. A few examples are set forth below:5
Registration No. 4409487 for the mark AMERICAN FAN
COMPANY for, inter alia, electric fans, registered under
Section 2(f);
Registration No. 4499720 for the mark AMERICAN
GRINDING COMPANY for, inter alia, repair of concrete
and asphalt surfaces, namely, grinding concrete and
asphalt surfaces, registered on the Supplemental
Register;
2 THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE
(www.ahdictionary.com), October 31, 2014 Office Action, TSDR p. 36. See also MERRIAM-
WEBSTER (www.merriam-webster.com), Id. at 34-35 (“of or relating to the United States or
its possessions or original territory”).
3 MERRIAM-WEBSTER (www.merriam-webster.com), October 31, 2014 Office Action, TSDR
p. 53.
4 MERRIAM-WEBSTER (merriam-webster.com), October 31, 2014 Office Action, TSDR p. 37.
See also MACMILLAN DICTIONARY (www.macmillandictionary.com), September 18, 2013
Office Action, TSDR p. 2 (“an organization that provides services, or that makes or sells
goods for money”).
5 April 13, 2014 Office Action, TSDR pp. 2-10, 24-25; October 31, 2014 Office Action, TSDR
pp. 5-6, 9-10, 14-21.
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Serial No. 85768317
Registration No. 4223481 for the mark AMERICAN
DISTILLING CO. for spirits, registered on the
Supplemental Register;
Registration No. 1724734 for the mark AMERICAN
CANDY COMPANY (and design) for candy, registered on
the Principal Register with the wording AMERICAN
CANDY COMPANY disclaimed;
Registration No. 4246191 for the mark AMSO
AMERICAN SHALE OIL CORP for identifying, exploring
and developing technologies that will enable a
commercially viable shale oil extraction operation,
registered on the Principal Register with the wording
AMERICAN SHALE OIL CORP disclaimed;
Registration No. 1969946 for the mark ADC AMERICAN
DRYER CORP. (and design) for commercial laundry
dryers, registered on the Principal Register with the
wording AMERICAN DRYER CORP. disclaimed;
Registration No. 4093467 for the mark GREAT
AMERICAN KETTLE CORN COMPANY AMERICA’S
FINEST KETTLE CORN (and design) for, inter alia,
candy coated popcorn, registered on the Principal Register
with the wording GREAT AMERICAN KETTLE CORN
COMPANY AMERICA’S FINEST KETTLE CORN
disclaimed;
Registration No. 3039599 for the mark SUPER-BEE
AMERICAN HONEY for honey, registered on the
Principal Register with the wording AMERICAN HONEY
disclaimed; and
Registration No. 3182997 for the mark A AMERICAN
CHOCOLATE DESIGNS (and design) for chocolate
dessert wafers, registered on the Principal Register with
the wording AMERICAN CHOCOLATE DESIGNS
disclaimed.
Based on this evidence, the Examining Attorney contends that “‘AMERICAN’
describes a generally known geographic location because it denotes the United
States of America” and, “in this case, the applied-for mark does primarily convey
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Serial No. 85768317
geographic significance overall and … ‘AMERICAN’ does not appear in an arbitrary
or suggestive manner in the applied-for mark.” Ex. Att. Br., 10 TTABVUE 4, 6. She
asserts that, similar to the marks in the third-party registrations, AMERICAN “is
used in a way that primarily denotes the United States as the origin of the
applicant or its goods and exhibits ‘unadorned’ use of the term ‘AMERICAN’.” Id. at
8. The Examining Attorney points to these third-party registrations to demonstrate
the USPTO’s treatment of marks containing the terms “AMERICAN” plus
“COMPANY” as geographically descriptive. Looking at the context of the mark, the
Examining Attorney notes the specimen of use shows “no indication that Applicant
markets its mark as suggesting anything other than the ordinary plain geographic
meaning and descriptive meanings of the terms in the mark.” Id. at 10. In short,
“[t]he way Applicant’s mark is grammatically structured, consumers would see
‘AMERICAN’ in ‘THE AMERICAN WAFFLE COMPANY’ as plainly primarily
describing that Applicant is an American or United States company that makes or
provides waffle products or that its waffles are made or sold in America.” Id. at 11.
To establish that the goods originate in the United States, the Examining
Attorney points to Applicant’s State of Incorporation, which is Delaware, its listed
physical address which is in Pennsylvania, and Applicant’s assertion, in response to
a requirement for information, that its goods are sold in the United States of
America. Lest there be doubt, the Examining Attorney also submitted evidence
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Serial No. 85768317
establishing Delaware and Pennsylvania as states within the United States of
America.6
As to whether purchasers would be likely to make a goods/place association the
Examining Attorney relies on the presumption they would make the association
given the primary significance of the mark is a geographical place that is neither
obscure nor remote and the goods originate in the place named in the mark.
During prosecution of the application, Applicant did not submit any evidence.
However, in its reply brief, Applicant points to third-party registrations to support
its contention that the USPTO treats the word AMERICAN as suggestive. First,
these registrations are not of record. Trademark Rule 2.142(d) (“The record in the
application should be complete prior to the filing of an appeal”); In re Hoefflin, 97
USPQ2d 1174, 1177 (TTAB 2010) (Mere listings of registrations are not sufficient to
make the registrations of record); and TBMP § 1208.02. In addition, the list in the
reply brief does not include the goods or services to allow for consideration of the
entire context. Finally, we cannot know the circumstances under which these third-
party registrations were permitted. In re Nett Designs, Inc., 263 F.3d 1339, 57
USPQ2d 1564, (Fed. Cir. 2001) (“Even if some prior registrations had some
characteristics similar to Nett Design’s application, the PTO’s allowance of such
registrations does not bind the Board or this court.”). For these reasons, Applicant’s
argument based on these purported registrations is of limited utility.
6 See THE COLUMBIA GAZETTEER OF THE WORLD (www.columbiagazetteer.org), October
31, 2014 Office Action, TSDR pp. 42-52.
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Serial No. 85768317
We also note that many of the examples presented by Applicant include
additional elements that may serve to tip the balance towards a more nebulous or
additional meaning, e.g., “ALL AMERICAN” “AMERICAN LEGACY” or
“AMERICAN HEARTS.” By contrast, the third-party registrations submitted by the
Examining Attorney consistently disclaim the word “AMERICAN” or are registered
based on acquired distinctiveness where the name of the goods or services is
included in the mark without further adornment of the word AMERICAN, as we
have here. See, e.g., AMERICAN FAN COMPANY, AMERICAN CANDY
COMPANY, and SUPER-BEE AMERICAN HONEY.
As noted above, we determine geographic descriptiveness based on the three
factors: (1) the primary significance of the term in the mark sought to be registered
is the name of a place generally known to the public; (2) the public would make an
association between the goods or services and the place named in the mark, that is,
believe that the goods or services for which the mark is sought to be registered
originate in that place; and (3) the source of the goods or services is the geographic
region named in the mark. Further, geographic descriptiveness, like descriptiveness
generally, “must be evaluated in relation to the particular goods for which
registration is sought, the context in which it is being used, and the possible
significance that the term would have to the average purchaser of the goods because
of the manner of its use or intended use.” In re Hollywood Lawyers Online, 110
USPQ2d 1852, 1857 (quoting In re Chamber of Commerce of the U.S.A., 675 F.3d
1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citation omitted)); see also In re
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Serial No. 85768317
Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865, 867 (Fed. Cir. 1985) (geographic
descriptiveness or misdescriptiveness “must be determined as ‘applied to the goods
of the applicant’”) (citations omitted); In re Premiere Distillery, LLC, 103 USPQ2d
1483, 1484 (TTAB 2012) (REAL RUSSIAN primarily geographically deceptively
misdescriptive under Section 2(e)(3) for vodka not sourced from Russia); In re
Jonathan Drew Inc., 97 USPQ2d 1640, 1643 (TTAB 2011) (KUBA KUBA primarily
geographically deceptively misdescriptive for cigars not from Cuba). In particular,
where the word AMERICAN is presented as the geographic term, we must consider
the entire context to understand whether the commercial impression of the mark is
that of the geographic origin of the goods or something other than origin.
1. Whether the source of the goods or services is the geographic region named in the
mark
We begin with this factor as it provides the context of whether matter would be
categorized as potentially geographically descriptive or geographically deceptively
misdescriptive. The record is clear on this point, Applicant is incorporated in the
state of Delaware, its address is in Hanover, Pennsylvania, and Applicant has
confirmed that its goods are sold in the United States. The state of Delaware and
Hanover, Pennsylvania are in the United States of America. Thus, the source of the
goods is the geographic region named in the mark, namely, AMERICAN.
2. Whether the primary significance of the term in the mark sought to be registered is
the name of a place generally known to the public
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Serial No. 85768317
There can be little doubt that the term AMERICAN means the United States of
America which is a place generally known to the American public. Applicant argues
that AMERICAN is not a geographic location because “[n]o generally accepted map
identifies any specific location as AMERICAN.” App. Br., 7 TTABVUE 11. However,
the dictionary definitions clearly establish that AMERICAN means of or relating to
the United States of America. That it is in adjectival form is of no moment. In re
Joint-Stock Co. “Baik,” 80 USPQ2d 1305 (TTAB 2006) (BAIKALSKAYA – the
Russian equivalent of “from Baikal” or “Baikal’s” – held primarily geographically
descriptive of vodka); In re Jack’s Hi-Grade Foods, Inc., 226 USPQ 1028 (TTAB
1985) (NEAPOLITAN held primarily geographically deceptively misdescriptive of
sausage emanating from the United States, where the term is defined as “of or
pertaining to Naples in Italy”); In re BankAmerica Corp., 231 USPQ 873 (TTAB
1986) (BANK OF AMERICA held primarily geographically descriptive).
Moreover, the addition of the generic wording WAFFLE and COMPANY does
not detract from this meaning and we find the primary significance is geographic.
Applicant contends that viewed in its entirety the mark “primarily indicates the
types of goods provided by Applicant, namely “pancakes and waffles.” App. Br., 7
TTABVUE 11. The other descriptive, or, as in this case, generic non-source
identifying words, do not garner the primary significance of the mark and thereby
do not obviate the geographic significance of the geographic term.7 In re
Cheezwhse.com, Inc., 85 USPQ2d at 1920.
7 We further note that the word THE at the beginning of Applicant’s mark does not support
registration. In re The Computer Store, Inc., 211 USPQ 72, 74-5 (TTAB 1981).
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Serial No. 85768317
Applicant, without evidentiary support, posits that “the AMERICAN element
suggests qualities of Applicant’s goods … including that they are part of a nutritious
breakfast, that they meet other standards and qualifications commonly held in the
United States.” App. Br., 7 TTABVUE 12, 14. Applicant cites to cases involving
marks with the word AMERICAN which were found to be not primarily
geographically descriptive. Hamilton-Brown Shoe Co. v. Wolf Bros. & Co., 240 U.S.
251 (THE AMERICAN GIRL held not primarily geographically descriptive for
shoes); Am. Plan Corp. v. State Loan & Fin. Corp., 365 F.2d 635, 150 USPQ 767 (3d
Cir. 1966), cert. denied, 385 U.S. 1011, 152 USPQ 844 (1967) (AMERICAN PLAN
CORPORATION held not primarily geographically descriptive for insurance
brokerage services); Wilco Co. v. Automatic Radio Mfg. Co., Inc., 255 F. Supp. 625,
151 USPQ 24 (D. Mass. 1966) (ALL AMERICAN held not primarily geographically
descriptive); In re Jim Crockett Promotions Inc., 5 USPQ2d 1455 (THE GREAT
AMERICAN BASH held not primarily geographically descriptive of wrestling
exhibitions).
The facts in this case reveal the word AMERICAN as modifying the goods,
waffles, and the type of entity providing the goods, COMPANY. This is very
different from Hamilton-Brown Shoe Co. v. Wolf Bros. & Co. where the goods were
shoes, and the use of AMERICAN to modify GIRL pointed to a more nuanced
meaning imbuing the shoes with an association or image for the potential
purchaser, and not to the geographic origin of the goods. Similarly, in In re Jim
Crockett Promotions Inc. the services were wrestling exhibitions and the word
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Serial No. 85768317
BASH, while perhaps suggestive, is not merely descriptive or generic for those
services. In addition, the Board found the addition of the word GREAT to suggest
“in much the same way as ‘All American’ something of desirable quality or
excellence.” In re Jim Crockett Promotions Inc., 5 USPQ2d at 1456. Here, the goods
are waffles and the mark tells the consumer they are from an AMERICAN
WAFFLE COMPANY, similar to AMERICAN FAN COMPANY, AMERICAN
CANDY COMPANY, etc. There is nothing in the record to support Applicant’s
position that it would suggest a nutritious breakfast.
3. Whether the public would make an association between the goods and the place
named in the mark, that is, believe that the goods for which the mark is sought to be
registered originate in that place.
As properly explained by the Examining Attorney, we presume such an
association based on Applicant’s location in the United States. In addition,
Applicant has stated that the goods are sold in the United States.
Decision: The refusal to register Applicant’s mark THE AMERICAN WAFFLE
COMPANY as primarily geographically descriptive under Section 2(e)(2) is
affirmed.
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