The Hermitage Group, Inc.

Trademark Trial and Appeal Board

Jun 11, 2002

No. 75533136 (T.T.A.B. Jun. 11, 2002)

6/11/02

Paper No. 19
TJQ

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re The Hermitage Group, Inc.
________

Serial No. 75/533,136
_______

Anthony S. Zummer of Palmatier & Zummer for applicant.

Lynn A. Luthey, Trademark Examining Attorney, Law Office
102 (Thomas Shaw, Managing Attorney).
_______

Before Quinn, Holtzman and Drost, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application has been filed to register the mark
HERMITAGE in typed form for “printed art reproductions.”1
The Trademark Examining Attorney has refused
registration under Section 2(a) of the Trademark Act on the
ground that applicant’s mark falsely suggests a connection
with an institution, namely the Hermitage Museum in Russia.

1 Application Serial No. 75/533,136, filed August 10, 1998,
setting forth dates of first use as 1926.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
T ISPOSITION
IS NOT ITABLE AS PRECEDENT
OF THE T. . .B.
Ser No. 75/533,136
2
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have submitted briefs.2
An oral hearing was not requested.
The Board, in a final decision dated January 15, 2002,
affirmed the same Section 2(a) refusal (false suggestion of
a connection) in applicant’s co-pending application Serial
No. 75/533,137. In that case, applicant sought to register
the mark shown below

2 Applicant’s request for an extension of time to file its reply
brief is granted, and the reply brief is considered timely filed.
In its reply brief, applicant has objected to “Appendix C” and
“Appendix D” attached to the Examining Attorney’s brief as not
being of record. The Board takes judicial notice of the
dictionary definition of the word “Cyrillic” (Appendix D). There
is a problem, however, with two of the four pages retrieved from
the Website of the Heritage Museum forming “Appendix C.”
Applicant’s objection grounded on the untimely submission of
these pages is well taken. Inasmuch as these two pages relating
to the “Museum Stores” were not properly introduced in the
record, this evidence and the Examining Attorney’s arguments
based thereon (“art museums often reproduce their own works of
art for sale and offer for sale the art on collateral goods
featuring works of art from the museum’s collection” and it is
“commonplace for museums to operate retail gift shops and on-line
retail stores featuring works from the museum’s collection”) have
not been considered in reaching our decision. We would also add
that, given the Board’s identical treatment of this evidence in
the earlier decision, of which the Examining Attorney was aware
when she filed her appeal brief, we are somewhat surprised that
the same mistake was repeated in the present case.
Ser No. 75/533,136
3
for the same goods as those involved herein, namely,
“printed art reproductions.” The Board denied applicant’s
request for reconsideration on March 12, 2002. At the time
of the Board’s decision, the Board was unaware of the
present application. The cases are essentially identical
in terms of the evidentiary record and arguments, with the
only significant distinction being that one mark is
presented in special form while the present mark is in
typed form.
Applicant, in urging that the refusal be reversed,
asserts that the name of the museum in St. Petersburg,
Russia comprises Russian words in the Cyrillic alphabet,
and that “Hermitage” is merely an “Americanization” of the
Russian name. Further, applicant contends that the word
“hermitage” does not uniquely and unmistakably identify the
museum, but rather identifies many places and things. In
support of its position, applicant submitted listings of
the word “hermitage” from ten dictionaries, none of which
refer to the museum. Applicant points out that these
“scholarly” dictionaries, some of which are multi-volume,
define “hermitage” as, firstly, a hermit’s place and,
secondly, a wine district. The absence of any reference in
these dictionaries to the museum demonstrates, according to
applicant, that the term “hermitage” is not universally
Ser No. 75/533,136
4
identified as the name of the museum in Russia. Applicant
also submitted an Internet search print-out of 100 websites
dealing with a variety of places and things named
“Hermitage,” including towns, hotels, businesses, an
appellation of wine and the home of President Andrew
Jackson. Also of record are labels from a bottle of French
wine showing “HERMITAGE Appellation Hermitage Contrôlée.”
The Examining Attorney maintains that the mark sought
to be registered falsely suggests a connection with the
Hermitage Museum in Russia, a place listed in the one
dictionary definition relied upon by her. The Examining
Attorney asserts that “[t]he Hermitage is a fine art museum
in St. Petersburg (formerly known as Leningrad), Russia”3
and that “[t]he world-renowned museum features works of art
and is known as the state museum of Russia.” (brief, p. 4)
The mark’s association with the museum is not dispelled by
the other meanings of “hermitage” because, according to the
Examining Attorney, these meanings have little or nothing
to do with the goods identified in the application, namely
printed art reproductions. In addition to the one
dictionary definition, the Examining Attorney relied upon

3 St. Petersburg, Russia has been renamed three times since its
founding. In June, 1991, the city’s name reverted back to “St.
Petersburg” from “Leningrad.”
Ser No. 75/533,136
5
ten excerpts retrieved from the NEXIS database showing
references to the Hermitage Museum in Russia, and two pages
from the museum’s website.
The Record
Applicant has relied upon listings of the term
“hermitage” from the following ten dictionaries: The
Oxford English Dictionary, Webster’s Third New
International Dictionary of the English Language, The
Century Dictionary and Cyclopedia, Funk & Wagnalls New
Standard Dictionary of the English Language, Funk &
Wagnalls New Comprehensive International Dictionary of the
English Language, The Concise Oxford Dictionary of Current
English, Random House Webster’s College Dictionary, The
Oxford Desk Dictionary, The Oxford Modern English
Dictionary, and Merriam-Webster’s Collegiate Dictionary.
The listings are quite consistent in their definitions of
the term “hermitage,” and the following one, taken from
Webster’s Third International Dictionary is representative:
“the habitation of a hermit; a secluded residence or
retreat; a house of various monastic orders; a chiefly red
Rhone Valley wine made from grapes grown above the commune
of Tain-l’Ermitage.” As pointed out by applicant, not a
single definition refers to the museum in Russia.
Ser No. 75/533,136
6
The dictionary definition of “hermitage” relied upon
by the Examining Attorney reads as follows: “the
habitation of a hermit; any secluded place of residence or
habitation; retreat; hideaway; (cap.) a palace in Leningrad
built by Catherine II and now used as an art museum.”
Random House Unabridged Dictionary (2d ed. 1993).
Aside from the dictionary definitions, applicant’s
evidence includes a print out of the first 100 websites
shown by way of an Internet search of “hermitage”; five of
the sites concern the Hermitage Museum. The evidence of
record shows that the term “Hermitage” names two towns (in
Arkansas and Pennsylvania), a street (in Chicago), five
hotels, two monasteries, President Andrew Jackson’s home
(in Tennessee), an animal shelter, a squash club,
condominiums and an insurance business. Applicant’s
evidence also shows that “Hermitage” identifies an
appellation of origin of a particular wine of Rhone, France
(“Appellation Hermitage Contrôlée”).
The ten NEXIS articles submitted by the Examining
Attorney make various references to the “Hermitage Museum,”
with one reference to the museum as “Hermitage” per se.
Also of record is the excerpt retrieved from the
museum’s website (www.hermitage.ru) indicating that the
museum is “[s]ituated in the center of St. Petersburg” and
Ser No. 75/533,136
7
that “the State Hermitage Museum is housed in five
magnificent buildings created by celebrated architects of
the 18th to 19th century.” The website also states “[p]ut
together throughout two centuries and a half, the Hermitage
collections of works of art (over 3,000,000 items) present
the development of the world culture and art from the Stone
Age to the 20th century.”
In addition to the evidence of record, we take
judicial notice of the following encyclopedia excerpts4 that
shed more light on the Hermitage Museum:
Hermitage: in full STATE HERMITAGE,
Russian GOSUDARSTVENNY ERMITAZH, art
museum in Leningrad (formerly St.
Petersburg) founded in 1764 by
Catherine the Great as a court museum.
It adjoined the Winter Palace and
served as a private gallery for the art
amassed by the Empress. Under Nicholas
I the Hermitage was reconstructed
(1840-52), and it was opened to the
public in 1852. Following the October
Revolution of 1917, the imperial
collections became public property.
Masterpieces of western European
painting since the Middle Ages, as well
as Russian art, are represented. The
Hermitage also has extensive holdings
of Oriental art, especially noteworthy
being its collection of the art of
Central Asia.
5 The New Encyclopaedia Britannica
(Micropaedia)(15th ed. 1988)

4 Such evidence, as a standard reference work, is proper subject
matter for judicial notice. See: The B.V.D. Licensing Corp. v.
Body Action Design Inc., 846 F.2d 727, 6 USPQ2d 1719 (Fed. Cir.
1988); and In re Mahony, 421 F.2d 742, 164 USPQ 572, 575 (CCPA
1970).
Ser No. 75/533,136
8

Leningrad: ...Between the square and
the river rises the huge and massive
rectangle of the Winter Palace, the
former principal residence of the
tsars...The whole complex, now called
the Hermitage, or State Hermitage
Museum, is a treasure-house of fine art
of worldwide significance that
originated in 1764 as the private
collection of the tsarina Catherine II.
22 The New Encyclopaedia Britannica
(Macropaedia)(15th ed. 1988)

Union of Soviet Socialist Republics—-
Museums and Galleries: Museum
attendance in the Soviet Union is
high...Famous museums include (in
Moscow) the Central Lenin
Museum...Leningrad has the Hermitage...
28 The New Encyclopaedia Britannica
(Macropaedia)(15th ed. 1988)

The Law
Section 2(a) of the Act prohibits, inter alia, the
registration of a mark if it “consists of or
comprises...matter which may...falsely suggest a connection
with persons, living or dead, institutions, beliefs, or
national symbols.”
In order to warrant a refusal under this portion of
Section 2(a), the Examining Attorney, who has the burden of
proof, must show that (i) the mark is the same as, or a
close approximation of, the name or identity previously
used by the other institution; (ii) the mark would be
recognized as such in that it points uniquely and
Ser No. 75/533,136
9
unmistakably to that institution; (iii) the institution
named by the mark is not connected with the activities
performed by the applicant under the mark; and (iv) the
prior user’s name or identity is one of sufficient fame or
reputation that a connection with such institution would be
presumed when applicant’s mark is used on applicant’s
goods. In re Urbano, 51 USPQ2d 1776 (TTAB 1999); In re
North American Free Trade Association, 43 USPQ2d 1282 (TTAB
1997); and In re Kayser-Roth Corp., 29 USPQ2d 1379 (TTAB
1993). The term “institution” as used in Section 2(a)
certainly encompasses museums. In re North American Free
Trade Association, supra.
Analysis
The mark sought to be registered is a close
approximation of the name of the museum at issue, namely
the Hermitage Museum (or Hermitage) in St. Petersburg,
Russia, and the mark would be recognized as such. We are
not persuaded by applicant’s argument that the name of the
museum is as it is written in Russia in the Cyrillic
alphabet. As shown by the museum’s website in the English
language version, the translation of the name from Cyrillic
is “The State Hermitage Museum.” Inasmuch as the issue
herein must be decided based upon the perception of the
relevant purchasing public in this country, the English
Ser No. 75/533,136
10
translation that will be encountered in the United States
must control.
As indicated on the museum’s website, the museum’s
collection exceeds 3 million works of art, and the
encyclopedia describes the holdings as “extensive.”
Applicant’s evidence of “Web Directory Sites” includes a
reference to the website of the museum, reading in part
“the five buildings which comprise the Hermitage now house
one of the finest art collections in the world.” Another
website refers to the Hermitage Museum as “one of the
world’s great museums.” Further, the encyclopedia refers to
the museum as “famous” and “a treasure-house of fine art of
worldwide significance that originated in 1764.” The
museum has been open to the public since 1852. Given the
renown of the museum, consumers of printed art
reproductions would recognize the mark HERMITAGE as a close
approximation of the name of the museum, namely the
Hermitage.
The major thrust of applicant’s argument is that the
term “Hermitage” does not uniquely and unmistakably point
to the Hermitage Museum. We acknowledge applicant’s point
that there are a variety of meanings of the term other than
as the name of the museum in Russia. As shown by
applicant, the name identifies a variety of things and
Ser No. 75/533,136
11
places, including an appellation of origin of wine, towns
and the home of a former President of the United States.
There is nothing to suggest, however, that any of
these other meanings of the term “hermitage” have anything
to do with art; thus, the only “person” or “institution”
which the mark HERMITAGE possibly identifies is the
Hermitage Museum. See: The Board of Trustees of the
University of Alabama v. BAMA-Werke Curt Baumann, 231 USPQ
408, 411 (TTAB 1986). The use by applicant appropriates
the museum’s identity. The mark, by its very nature,
falsely suggests a connection with the Hermitage art museum
in Russia. See: The University of Notre Dame v. J. C.
Gourmet Food Imports Co. Inc., 703 F.2d 1372, 217 USPQ 505,
509 (Fed. Cir. 1983), citing FBI v. Societe M. Bril & Co.,
187 USPQ 685, 687 (D.D.C. 1975).
With respect to whether the museum is, in fact,
connected with the printed art reproductions sold by
applicant under its mark, the record is silent. Thus, we
are left to find that applicant’s mark falsely suggests
that its printed art reproductions are of art displayed in
the Hermitage, or are of artists who have some of their
works displayed in the museum or are of artists schooled at
the Hermitage. The University of Notre Dame v. J. C.
Ser No. 75/533,136
12
Gourmet Food Imports Co. Inc., supra at 509 (Fed. Cir.
1983).
Conclusion
The evidence of record convinces us that the Hermitage
is the name of an art museum of sufficient fame or
reputation that a connection with the museum would be
presumed when applicant’s mark is used on printed art
reproductions.5 Such goods obviously are closely related to
art museums; in this case, specifically the Hermitage
Museum.6 We find that the Office has met its burden of
proving that applicant’s mark HERMITAGE in typed form
falsely suggests a connection with the Hermitage Museum.
Decision: The refusal to register is affirmed.

5 In connection with a likelihood of confusion refusal that was
later withdrawn in the involved application, we note the
existence of at least three registrations of marks incorporating
the term “Hermitage” for goods in the arts and/or crafts field.
Suffice it to say, we are not privy to the records in these
registrations and, in any event, the determination of
registrability of particular marks by the Office cannot control
the result in another case. See: In re Nett Designs, Inc., 236
F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
6 Applicant places heavy reliance on the Federal Circuit’s
decision in Notre Dame. We agree with the Examining Attorney,
however, that the present case is distinguishable because here
applicant’s goods are for essentially the same goods for which
the Hermitage is known, namely art works.