The North American Marketing Corp.

Trademark Trial and Appeal Board

Dec 8, 2004

No. 76450244 (T.T.A.B. Dec. 8, 2004)

12/8/2004
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
Trademark Trial and Appeal Board
____________
In re The North American Marketing Corporation
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Serial No. 76450244
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Peter L. Costas of Pepe & Hazard for The North American
Marketing Corporation.
Stacy B. Wahlberg, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney).
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Before Hanak, Quinn and Holtzman, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
The North American Marketing Corporation (applicant)
seeks to register in typed drawing form NEW ENGLAND FORGE
for “wrought iron patio furniture, namely, chairs, tables,
chaise lounges and plant stands.” The intent-to-use
application was filed on September 17, 2002.
Citing Section 2(e)(2) of the Trademark Act, the
Examining Attorney has refused registration on the basis
THIS OPINION IS NOT
CITABLE
AS PRECEDENT OF
THE T.T.A.B.
Ser. No. 76450244
2
that the mark NEW ENGLAND FORGE is primarily geographically
descriptive of applicant’s goods. When the refusal to
register was made final, applicant appealed to this Board.
Applicant and the Examining Attorney filed briefs.
Applicant did not request an oral hearing.
At the outset, we note that in order to establish that
a mark is primarily geographically descriptive of
applicant’s goods, “it is necessary to show that the mark
sought to be registered is the name of a place known
generally to the public, and that the public would make a
goods/place association, i.e. believe that the goods for
which the mark is sought to be registered originate in that
place.” In re California Pizza Kitchen, 10 USPQ2d 1704,
1705 (TTAB 1988) citing In re Societe General, 824 F.2d
757, 3 USPQ2d 1450 (Fed. Cir. 1987).
In this case there can be no dispute that the
geographical term “New England” is well known to the
public. Indeed, at page 4 of its brief, applicant states
that “New England is a familiar geographical location.”
In addition, there is no dispute that applicant is
located in Manchester, Connecticut, and that Connecticut is
located within New England. Given that New England is a
well-known geographic term and that applicant is located
within New England, we can presume that the public would
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3
make the requisite goods/place association. California
Pizza Kitchen, 10 USPQ2d at 1706. See also In re Handler
Fenton Westerns, Inc., 214 USPQ 848 (TTAB 1982). Moreover,
the addition of the word FORGE to NEW ENGLAND does not
cause the mark in its entirety to lose its significance as
being primarily geographically descriptive. In re Chalk’s
International Airlines, 21 USPQ2d 1637 (TTAB 1991). The
word “forge” is defined as follows: “A furnace for heating
metal to be wrought” or “A place where metal is heated and
wrought.” Webster’s New World Dictionary (1996). As
applied to wrought iron patio furniture, the word “forge”
merely indicates the place where the iron was manufactured.
See also The American Heritage Dictionary of the English
Language (3rd ed. 1992) which defines the word “forge” to
mean “A workshop where pig iron is transformed into wrought
iron.”
In arguing that its mark NEW ENGLAND FORGE is not
primarily geographically descriptive, applicant at page 4
of its brief sets forth two primary arguments. First,
applicant argues that its goods “are neither made or
assembled in New England.” Second, applicant argues that
its goods “are not solely comprised of forged or wrought
components.”
Ser. No. 76450244
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In arguing that its goods are not made or assembled in
New England, applicant explains that its goods are in fact
“imported from overseas.” (Applicant’s brief page 4). This
Board encountered a similar argument in In re Nantucket
Allserve Inc., 28 USPQ2d 1144 (TTAB 1993). There the
applicant sought to register NANTUCKET NECTARS for soft
drinks. Applicant argued that because its soft drinks were
not actually manufactured on the island of Nantucket, that
therefore NANTUCKET NECTARS was not primarily
geographically descriptive of applicant’s soft drinks. The
Board dismissed applicant’s argument noting that while
applicant’s soft drinks were not manufactured on the island
of Nantucket, that nevertheless applicant was headquartered
on Nantucket. In this case, the fact that applicant is
headquartered in New England (Manchester, Connecticut) is
dispositive. Moreover, while applicant may import its
wrought iron patio furniture from overseas, applicant has
never disputed the fact that its customers then order said
furniture from applicant located in New England. Thus, as
far as applicant’s customers are concerned, the goods
(wrought iron patio furniture) do originate from a company
(applicant) located in New England.
As for applicant’s second primary argument that its
wrought iron patio furniture is “not solely comprised of
Ser. No. 76450244
5
forged or wrought components,” applicant explains at page 5
of its brief that “non-metallic components are included.”
Applicant’s argument suffers from two defects. First,
applicant has never argued that its wrought iron patio
furniture does not consist almost entirely of wrought iron.
The fact that applicant’s wrought iron may have a few non-
metallic components does not cause applicant’s mark NEW
ENGLND FORGE to lose its significance as being primarily
geographically descriptive. Second, in any event, it must
be remembered that in order to be held descriptive, the
word FORGE does not have to describe all of the qualities
or characteristics of the relevant goods. Rather, it is
sufficient that the word “forge” describe one significant
quality or characteristic of the relevant goods, in this
case, wrought iron patio furniture. In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987).
Finally, in addition to its two primary arguments as
to why NEW ENGLAND FORGE is not primarily geographically
descriptive of its goods, applicant also argues at pages 5
and 6 of its brief that “the average purchaser would not
associate the word ‘forge’ with furniture.” To begin with,
we note that applicant’s goods are not just any furniture,
but rather are wrought iron patio furniture. While the
public may not associate the word “forge” with wooden
Ser. No. 76450244
6
furniture, this does not mean that they would not associate
the word “forge” with wrought iron furniture. In addition,
the Examining Attorney during the course of the application
process submitted excerpts of articles showing that the
word “forge” is used in connection with household furniture
and other household items. For example, an article in the
August 9, 2003 edition of The Birmingham News (Birmingham,
Alabama) discusses “ready-made dining chairs” that are
manufactured in a forge.
In sum, based upon the evidence of record, we find
that NEW ENGLAND is clearly primarily geographically
descriptive of applicant’s goods, and that the addition of
the word FORGE to NEW ENGLAND does not result in a
composite (NEW ENGLAND FORGE) which is not primarily
geographically descriptive of wrought iron patio furniture.
Decision: The refusal to register is affirmed.