The Newbridge Cutlery Company t/a Newbridge Silverware

Trademark Trial and Appeal Board

Apr 29, 2013

No. 79094236 (T.T.A.B. Apr. 29, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
April 29, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re The Newbridge Cutlery Company t/a Newbridge Silverware
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Serial No. 79094236
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Kanishka Agarwala of Anderson Kill & Olick, P.C. for The Newbridge Cutlery
Company t/a Newbridge Silverware.
Kristin Carlson, Trademark Examining Attorney, Law Office 105 (Thomas
G. Howell, Managing Attorney).
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Before Bucher, Wolfson and Masiello, Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
The Newbridge Cutlery Company t/a Newbridge Silverware (“applicant”)
seeks registration on the Principal Register of the mark NEWBRIDGE HOME (in
standard characters) for the following goods, in International Classes 8, 14, 16 and
21:1

1 Application Serial No. 79094236 was filed on October 14, 2010, under Section 66(a) of the
Trademark Act, 15 U.S.C. § 1141f(a), based on a request for extension of protection of
International Registration No. 1068849, registered October 14, 2010. A disclaimer to the
word “HOME” is of record in the application.
Serial No. 79094236

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In International Class 8: Hand tools, namely, razors;
cutlery, namely, forks, knives, and spoons; tea spoons;
desert spoons; soup spoons; steak knives; carving knives;
fish knives; salad forks; pastry forks and all of the
foregoing silver-plated.
In International Class 14: Jewelry, precious stones;
horological and chronometric instruments, namely, clocks
and watches; bracelets; necklaces; rings; cuff links; tie
pins; earrings; costume jewelry; key rings made of or
plated with precious metals; brooches; personal
ornaments made of or plated with precious metals.
In International Class 16: Silver-plated desktop holders
for business cards; silver-plated pen holders; silver-plated
pens.
In International Class 21: Household or kitchen utensils
and containers, namely, spatulas, fish slices in the nature
of spatulas, ladles, cooking tongs, colanders, cruet sets,
toast racks, flasks, bottle openers; bowls; non-electric
candelabra; candlesticks; cocktail utensils, namely,
cocktail shakers, cocktail stirrers, cocktail strainers, ice
buckets, corkscrews; cooking pots; saucepans; corkscrews;
glassware, namely, wine glasses, drinking glasses;
crockery, namely, cups, mugs, saucers, plates, serving
dishes, bowls, and side-plates; milk jugs; sugar bowls;
vases; napkin rings; salt shakers; pepper mills.
This case is now before the Board on appeal from the final refusal of the
Trademark Examining Attorney to register this designation based upon the ground
that it is primarily geographically descriptive of applicant’s goods under Trademark
Act Section 2(e)(2), 15 U.S.C. § 1052(e)(2). Notification of the refusal was
transmitted to the International Bureau pursuant to Section 68(c)(1)(A), 15 U.S.C.
§ 1141h(c)(1)(A).
Serial No. 79094236

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When the refusal was made final, applicant appealed and filed a request for
reconsideration. The examining attorney denied the request for reconsideration,
and the appeal was resumed. We affirm the refusal.2
Applicable Law
The test for determining whether a mark is primarily geographically
descriptive is whether (1) the primary significance of the mark is the name of a
place known generally to the public, and whether (2) the public would make a
goods/place association, that is, believe that the goods identified in the application
originate in that place. If these elements are met, and if the applicant’s goods in
fact originate or will originate in or from the place named in the mark, then the
mark is primarily geographically descriptive of the goods. In re Cheezwhse.com Inc.,
85 USPQ2d 1917, 1919 (TTAB 2008). See also, In re Societe Generale des Eaux
Minerales de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); In re Joint-
Stock Co. “Baik”, 80 USPQ2d 1305 (TTAB 2006); and In re JT Tobacconists, 59
USPQ2d 1080 (TTAB 2001).
A mark is not “primarily” geographic where the geographic meaning is minor,
obscure, remote, or unconnected with the goods. In re Nantucket, Inc., 677 F.2d 95,
213 USPQ 889 (CCPA 1982) (use of a geographic term in a fictitious, arbitrary or
fanciful manner is not “primarily” a geographic designation.)

2 As a threshold evidentiary matter, we note that to the extent applicant has objected to the
examining attorney’s evidence, the objection is overruled. All evidence has been properly
submitted during prosecution as attachments to the first and final Office actions and the
denial of the request for reconsideration. See Trademark Rule 2.142(d).
Serial No. 79094236

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A. Origin of Applicant’s Goods
There is no dispute that applicant’s goods originate in Newbridge, Ireland.
Newbridge is the site of applicant’s headquarters; as applicant explains, “all goods
are designed in and dispatch from Newbridge,” and applicant “manufactures some
of its goods in Newbridge, the remainder being manufactured and packaged
abroad.”3
B. Primary significance of “Newbridge”
Under the first prong of the test for determining whether NEWBRIDGE
HOME is primarily geographically descriptive, we consider whether the primary
significance of the term “Newbridge” is that of a geographic location. Although
applicant’s mark is NEWBRIDGE HOME, our primary focus under Section 2(e)(2)
is on the term “Newbridge” because the word HOME is merely descriptive of a
feature of applicant’s goods, namely, that they are for use in one’s home.4 If
“Newbridge” is primarily geographically descriptive, the presence of the descriptive
term “home” will not convert the mark NEWBRIDGE HOME into a term that is not
primarily geographically descriptive. In re Compagnie Generale Maritime, 993 F.2d
841, 26 USPQ2d 1652 (Fed. Cir. 1993) (FRENCH LINE (stylized) primarily
geographically descriptive of goods and services from France); In re Chalk's Int'l
Airlines Inc., 21 USPQ2d 1637, 1639 (TTAB 1991) (PARADISE ISLAND AIRLINES

3 Response to Office action, October 3, 2011.
4 In particular, the International Class 21 identification of goods includes “household or
kitchen utensils and containers”; applicant describes its NEWBRIDGE HOME goods as “a
beautiful range of gifts for the home presented in gift packaging”; and in recognition of the
descriptive nature of the term, applicant has disclaimed exclusive rights to the word
HOME.
Serial No. 79094236

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primarily geographically descriptive of the transportation of passengers and goods
by air).
Applicant argues that “Newbridge” is not generally well-known to the
average purchaser of its goods, but rather, is unknown to the “mill-run American
consumer … who purchases items such as forks, knives, spoons, silver-plated
jewelry, etc.”5 However, the town is the second largest in County Kildare and the
seventeenth largest in the Republic of Ireland.6 It is listed in the Columbia
Gazetteer of the World,7 and appears on the Internet at tourism websites such as the
website “www.discoverireland.com,” which describes Newbridge as “a large
commercial town with plenty of shops, coffee shops, restaurants, hotels and pubs,”8
and “www.newbridgetown.com,” which describes several visitor attractions in
Newbridge, one of which is applicant’s silverware visitor centre.9 That website also
notes Newbridge is home to several museums and gardens and numerous historical
and battle sites. Horseracing is described as taking “centre stage” at the Curragh
Racecourse in Newbridge, stating that “The County Kildare venue hosts some of the
most famous races in the world ….”10
Under the first element of the Section 2(e)(2) refusal, we find that the
primary significance of the mark NEWBRIDGE HOME is that of a generally known
geographic place, i.e., the town of Newbridge, in Kildare County, Ireland. The first

5 Brief, p. 10.
6 At http://en.wikipedia.org/wiki/Newbridge, County_Kildare; attached to Final Office action
dated December 12, 2011.
7 At http://www.columbiagazetteer.org; attached to Office action dated March 31, 2011.
8 Final Office action, exhibit 5.
9 Id., exhibit 7.
10 Id.
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element of the Section 2(e)(2) refusal accordingly is established. Accord, In re Roy
J. Mankovitz, 90 USPQ2d 1246 (TTAB 2009) (“minimal information” sufficient to
show “Montecito” is a generally known geographic location).
C. Goods/Place Association
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, e.g., In re JT Tobacconists, 59 USPQ2d at 1082; In re Roy
J. Mankovitz, 90 USPQ2d at 1249; In re Handler Fenton Westerns, Inc., 214 USPQ
848 (TTAB 1982). However, if genuine issues remain as to whether the geographic
meaning is obscure, minor, remote, or not likely to be connected with the goods, the
examining attorney bears the burden of establishing a public association of the
goods with that place. In re Wada, 194 F.3d 1297, 52 USPQ2d 1539, 1540 (Fed. Cir.
1999); In re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889, 893 (CCPA 1982); In re
Joint-Stock Co. "Baik", 80 USPQ2d at 1309 (“[t]he determination of the goods/place
association is made not in the abstract, but rather in connection with the goods or
services with which the mark is used and from the perspective of the relevant public
for those goods or services.”)
Based on a careful review of the evidence submitted in this proceeding, we
find that the relevant segment of the American purchasing public would make the
connection between applicant’s goods and the geographic place named in the mark.
The town of Newbridge “developed beside the British cavalry barracks from 1816
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onwards.”11 It was a thriving garrison community at the turn of the 20th century
until the British army moved out in 1921. Around this time, five craftsmen from
Sheffield, England decided to move to Newbridge to revitalize the town, and in 1934
they established Newbridge Silverware, taking the name from the town of
Newbridge.12 Newbridge has been the geographical location from which applicant’s
goods have originated for over seventy-five years.
The connection between applicant’s goods and its geographic location of
origin are further underscored by applicant’s marketing practice. Applicant sells its
goods online to the United States and through retail outlets (in Missouri,
Pennsylvania, Michigan, Illinois, and New York) that feature products from
Ireland.13
Applicant argues that the popularity of the town is driven in large part by
applicant’s presence and that its mark “has acquired secondary meaning in the
minds of consumers as signifying the applicant.”14 Applicant has submitted the
declaration of its Managing Director, Mr. William Doyle, who states that applicant
was the first and is now “the only manufacturer of cutlery, silverware and
homeware located in Newbridge, Ireland,” and that applicant has been Ireland’s
“premier designer and producer of cutlery, silverware and associated homeware
products” for over 75 years, and the “premier supplier of giftware and homeware

11 Final Office action, exhibit 6.
12 At http://kildare.ie/newbridge/about-newbridge.asp, attached to Final Office action dated
December 10, 2011; exhibit 2.
13 At www.newbridgesilverware.com; attached to Final Office action, exhibit 22.
14 Applicant’s Request for Reconsideration, p. 11.
Serial No. 79094236

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products” for at least the last 10 years.15 On its website, applicant describes the
history of Newbridge and applicant’s role in establishing the town as a center for
cutlery and silverware production.16 Located at the Newbridge Silverware Visitor
Centre is the Museum of Style Icons, “a permanent exhibition dedicated to design
and style excellence,” which includes pieces from vintage Hollywood movies.17
Applicant’s Newbridge Silverware Visitor Centre is listed as a major visitor
attraction on several travel websites.18 A chauffeur tour of Kildare County includes
a stop at the Newbridge Silverware Visitor Centre, describing on its website:
“Ireland is renowned the world over for its production of fine silverware and this
tradition is proudly carried on at Newbridge Silverware.”19 The Wikipedia entry
identifies applicant as “the famous Newbridge Silverware plant.”20
The examining attorney’s denial of applicant’s Request for Reconsideration
echoes this statement, wherein it notes, “In the present case, the evidence attached
to the previous Office actions demonstrated that Newbridge has numerous tourist
attractions and is even ‘world renowned’ for its production of fine silverware.” The
examining attorney however, contends that the fact that Newbridge, Ireland may

15 Decl. of William Doyle, attached to applicant’s Request for Reconsideration, exhibit 1.
16 At www.newbridgesilverware.com, attached to first Office action, exhibit 2.
17 At www.kildare.ie, attached to Final Office action, exhibit 2. In 2009, the Museum
served as a venue for a travelling collection of memorabilia associated with the singer
Michael Jackson; also in 2009 a collection of personal items belonging to Barbra Streisand
was on exhibit at the Museum. At www.lexis.com; attached to Final Office action, exhibit
13. Music-related memorabilia from the “Icons of Music II” exhibit went on temporary
display in 2011. Id., exhibits 11 and 12.
18 See, e.g., at www.newbridgetown.com/things-to-see.asp; www.discoverireland.ie.
19 At www.greganchauffeurireland.ie, attached to Office action dated December 12, 2011,
exhibit 9. See also, at www.gregantoursireland.com, a tour description of the Kildare
County Day Tour, highlighting the “Newbridge Silverware & Style Icon Museum.”
Attached to Denial of Request for Reconsideration, exhibit 17.
20 At http://en.wikipedia.org; final Office action exhibit 3.
Serial No. 79094236

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have gained renown due to the applicant’s presence in that location “does not
subtract from the Section 2(e)(2) analysis.”21 In a footnote, the examining attorney
advised applicant that the Office would not consider an amendment to claim the
benefit of Section 2(f) of the Trademark Act, “since applicant appears to have
entered its goods into commerce in the United States only relatively recently.”
Despite the renown of applicant’s silverware company, and given that there
is no amendment in the record to register the mark under the provisions of Section
2(f), we find that the evidence supports a finding that the relevant purchasing
public would primarily view the mark NEWBRIDGE HOME as indicating the
geographical source of the goods. To the extent the evidence of record creates a
genuine issue regarding the primary significance of Newbridge in the minds of
American “homeware” consumers, such that a goods/place association cannot
therefore be presumed from the fact that the goods come from Newbridge, the
examining attorney has presented evidence sufficient to establish that American
consumers of these products would in fact make such as association. Moreover, the
town of Newbridge is not sufficiently remote, minor, or obscure that the goods/place
association would not be made. Cf., In re Brauerei Aying Franz Inselkammer KG,
217 USPQ 73, 75 (TTAB 1983) (despite Germany’s reputation as a producer of beer,
the small town identified by the mark AYINGER BIER was sufficiently remote so
that no goods/place association would be made); In re Bavaria St. Pauli Brauerei
AG, 222 USPQ 926, 927-28 (TTAB 1984) (geographic significance of JEVER was
obscure; held registrable for beer made in Jever, Germany); In re Brouwerij

21 Denial of applicant’s Request for Reconsideration, p. 3 (unnumbered).
Serial No. 79094236

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Nacional Balashi NV, 80 USPQ2d 1820 (TTAB 2006) (BALASHI sufficiently
obscure or remote to average American beer consumer).
Applicant further argues that the primary significance of the term
NEWBRIDGE is not geographic because it has another meaning which derives from
the joinder of the words “new” and “bridge.” Applicant contends that the mark is
used to “denote/evoke a path from a position of lack to one of fulfillment, or a means
of joining the consumer with his/her goals by means of a ‘bridge’ that is ‘new.’”22
Applicant’s Request for Reconsideration, p. 6, exhibit 12 shows several printouts
from websites for unrelated goods and services, where a phrase (such as “your
bridge to financial freedom”) or a picture (such as that of a bridge) suggests the
connotation advanced by applicant. However, the fact that a term may have other
meanings does not necessarily alter the primacy of its geographical significance.
See, e.g., In re Cookie Kitchen, Inc., 228 USPQ 873 (TTAB 1986) (that
“MANHATTAN” is the name of an alcoholic cocktail does not alter the primary
significance of that term as a borough of New York City.) Here, the primary
meaning of “Newbridge” is that of a geographic location. The third-party non-
geographic uses of “Newbridge” as connoting a “new bridge” do not show otherwise.
Likewise, the fact that the Office has granted third-party registrations for marks
that include “Newbridge”23 without requiring a disclaimer of that term do not show
that “Newbridge” is not primarily geographic in this instance. None of the third-
party registrations, or the third-party websites, are for related goods or services.

22 Applicant’s Appeal Brief, p. 12.
23 Request for Reconsideration, exhibit 13.
Serial No. 79094236

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There is nothing in the record to show that the goods or services involved in any of
these registrations or websites come from any place named “Newbridge.” Even if
some of the goods or services involved emanated from a place named “Newbridge,”
this would not be dispositive. “That there is more than one place bearing the name
or that one place is better known than another is not dispositive. The issue is not
the fame or exclusivity of the place name, but the likelihood that a particular place
will be associated with particular goods.” In re Loew’s Theatres, Inc., 769 F.2d 764,
226 USPQ 865, 868 (Fed. Cir. 1985).
Based on the evidence of record herein, we find, under the second element of
the Section 2(e)(2) refusal, that a goods/place association exists between applicant’s
goods and the geographic place named in the mark.
Decision: Applicant’s mark NEWBRIDGE HOME is primarily
geographically descriptive of applicant’s goods. The refusal to register the mark
under Trademark Act Section 2(e)(2) is affirmed.