The Post Office

Trademark Trial and Appeal Board

Apr 17, 2001

No. 74523981 (T.T.A.B. Apr. 17, 2001)

4/17/01 Paper No. 15
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re The Post Office
________
Serial No. 74/523,981
_______
John A. Clifford of Merchant & Gould P.C. for The Post
Office.
Melvin T. Axilbund, Trademark Examining Attorney, Law
Office 113 (Meryl Hershkowitz, Managing Attorney).
_______
Before Chapman, Bottorff and Drost, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
On May 12, 1994, The Post Office (a United Kingdom
corporation located in London, England) filed an
application to register the mark BRITISH POST OFFICE for
the following goods and services, as amended:
(1) “electrical, electronic and optical apparatus
and instruments, all for use in handling,
processing and sorting of goods, namely address
readers, sorters, bar code readers, optical
reading machines for sorting packets and letters,
optical reading machines for reading addresses or
address codes on packets and letters and applying
corresponding machine-readable optical indicia
thereon for further sorting, electrical and
electronic machines for applying machine-readable
optical indicia to packets and letters;
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
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2
computers, computer programs, magnetic discs and
tapes, all for the storage and transmission of
data in the field of handling, processing,
sorting and tracking goods; and parts for all the
aforesaid goods” in International Class 9;
(2) “paper cardboard, cardboard articles, namely
boxes, dividers for boxes, tubes; filing trays;
stamp dispensers; packaging materials, namely
paper bags, boxes, mailing tubes, plain wrapper
paper, fillers, and envelopes; printed matter,
namely special handling forms, pricing lists,
instruction sheets in the use of postal services;
printed postcards and greeting cards; printed
tickets, blank and printed labels; philatelic
products, namely stamps, collection books, stamp
mounting materials; stationery; office
requisites, namely stamp dispensers, blank
address books, blank address cards and card
files, and writing paper; postal money orders;
postal special handling orders; maps; blank paper
and paper cards for the recordal of computer
programs and data; printed instructional and
teaching materials in the fields of packaging,
addressing and delivery options for goods and
correspondence and for stamp collecting” in
International Class 16;
(3) “transmission of messages, telegrams,
information and data by manual, mechanical,
electronic, optical, telephone, telex, cable,
computer and satellite means” in International
Class 38;
(4) “collection, storage and delivery of
correspondence, packets, packages, parcels,
newspapers, freight and of goods, all by road,
rail, air or water; courier services; unloading
of cargo; rental of mailboxes; guarded transport
of valuables; rental of vehicles; freight
forwarding, warehousing; rental of warehouses” in
International Class 39; and
(5) “catering services; computer programming for
others; chemical technological research;
materials testing; industrial design and
packaging design services; engineering drawing;
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3
engineering services; provision of facilities for
exhibitions; printing; security consultations” in
International Class 42.
The application is based on applicant’s assertion of a bona
fide intention to use the mark in commerce which the U.S.
Congress may regulate. Applicant disclaimed the words
“POST OFFICE.”
The Examining Attorney has finally refused
registration on two grounds: (1) that applicant lacks
authority to use “post office” under 18 U.S.C. §1729, and
(2) that the mark is primarily geographically descriptive
under Section 2(e)(2) of the Trademark Act, 15 U.S.C.
§1052(e)(2).
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs. Applicant did not
request an oral hearing.
We consider first the refusal to register under 18
U.S.C. §1729, and we must address the Examining Attorney’s
basis for this specific refusal to register. As explained
in the Trademark Manual of Examining Procedure at TMEP
§1205.01, various federal statutes prohibit or restrict the
use of certain, words, names, marks, insignia, seals, etc.
In that same section of the Manual there is further
explanation, as follows:
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Usually the statute will define the
appropriate use of a designation and
will prescribe criminal penalties or
civil remedies for improper use.
However, the statutes themselves do not
provide the basis for refusal of
trademark registration. ... If a
statute provides that a specific party
or government agency has the exclusive
right to use a designation, and a party
other than that specified in the
statute has applied to register such
designation, the examining attorney
must refuse registration under all
appropriate sections of the Trademark
Act and reference all relevant
statutory provisions.
The Manual goes on to explain various possible
refusals to register under the Trademark Act, such as,
applicant’s use of the mark would be unlawful under the
referenced statute (Sections 1 and 45 of the Trademark Act,
15 U.S.C. §§1051 and 1127); or Section 2(a), 15 U.S.C.
§1052(a), falsely suggesting a connection with the
institution or person specified in the statute; or Section
2(b), 15 U.S.C. §1052(b), matter comprising a flag, coat of
arms, etc.
The Examining Attorney described this particular
refusal as “a refusal based on the federal criminal code.”1
1 The Examining Attorney stated in his brief on appeal that
registration was not refused under Section 2(a) because although
the words “post office” in applicant’s mark “may falsely suggest
a connection with the United States Postal Service, the
additional term BRITISH militates against [such] an inference...”
(emphasis in original).
Ser. No. 74/523981
5
(Brief, p. 3.) However, as is clear from the TMEP,
refusals to register trademarks must be grounded in the
Trademark Act. Based on the arguments and record before
us, we construe the Examining Attorney’s refusal to
register under 18 U.S.C. §1729 to be one based on Sections
1 and 45 of the Trademark Act, i.e., that applicant’s use
of this mark would be unlawful under 18 U.S.C. §1729.
The specific statute, 18 U.S.C. §1729 “Post office
conducted without authority,” reads, in its entirety, as
follows:
Whoever, without authority from the
Postal Service, sets up or professes to
keep any office or place of business
bearing the sign, name, or title of
post office, shall be fined under this
title.
It is important to note that inasmuch as 18 U.S.C.
§1729 is a criminal statute, it must be strictly construed.
See United States ex rel. Federal Bureau of Investigation
v. Societe Anonyme Francaise M. Bril and Co., __ F. Supp.
__, 187 USPQ 685, 688 (D.D.C. 1975).
The Board cases regarding unlawful use require a high
standard be met, i.e., clear and convincing evidence that
use would constitute a material violation of the applicable
law. In fact, the Board has stated in the past that we
will normally hold use of a mark in commerce unlawful only
Ser. No. 74/523981
6
when the issue of lawfulness has previously been determined
by a court or governmental agency having competent
jurisdiction under the statute involved, or where there has
been a per se violation of a material portion of the
statute regulating the sale of a party’s goods and/or
services. See General Mills Inc. v. Health Valley Foods,
24 USPQ2d 1270 (TTAB 1992); Kellogg Co. v. New Generation
Foods, Inc., 6 USPQ2d 2045 (TTAB 1988); and Satinine
Societa in Nome Collettivo di S.A. e M. Usellini v. P.A.B.
Produits et Appareils de Beaute, 209 USPQ 958 (TTAB 1981).
Here a criminal statute is involved, which makes it even
more imperative that any violation be a clear per se
violation of a material portion of the statute or
determined by a court having competent jurisdiction under
the statute.
From the record before us, we cannot say that if
applicant commences use of its applied-for mark in commerce
which may be regulated by Congress, such use would be
unlawful under 18 U.S.C. §1729, as would constitute a basis
for refusal under Sections 1 and 45 of the Trademark Act.
We turn now to the refusal to register under Section
2(e)(2). The Examining Attorney contends that the primary
significance of the term BRITISH is geographic; that the
addition of the generic or highly descriptive words “POST
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7
OFFICE” to the geographic term does not negate the
geographic nature of applicant’s mark; and that because
applicant’s goods and services would come from the
geographical place named, a public association with the
place named will be presumed.
In support of the refusal to register, the Examining
Attorney submitted the following dictionary definitions:
(1) BRITISH, “adj. 1. of or pertaining
to Great Britain or its inhabitants...,
n. 3. the people native to or
inhabiting Great Britain...,” Random
House Unabridged Dictionary (2nd ed.);
(2) BRITISH, “adj. 1. Of, pertaining
to, or characteristic of Great Britain,
the United Kingdom, or the British
Empire..., n. 1. (used with a pl. verb)
The people of Great Britain...,” The
American Heritage Dictionary (2nd ed.);
and
(3) POST OFFICE, “1. an office or
station of a government postal system
at which mail is received and sorted,
from which it is dispatched and
distributed, and at which stamps are
sold or other services rendered...,”
Random House Unabridged Dictionary (2nd
ed.).
Applicant argues that “undue focus has been placed on
the word BRITISH and insufficient consideration has been
given to the words POST OFFICE as part of a composite mark”
(brief, p. 3); and that applicant’s wide variety of goods
and services “demonstrate that it is unreasonable to
Ser. No. 74/523981
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conclude that purchasers would perceive the goods and
services as coming from Britain or the United Kingdom”
(brief, p. 4). Further, applicant specifically argues as
follows that the mark BRITISH POST OFFICE is unique and
identifies applicant as the source of the goods and
services:
(1) The mark BRITISH POST OFFICE is
rather unique, first because it
represents the trademark of a
governmental entity of the United
Kingdom (commonly referred to as ‘Great
Britain’), and because the Post Office
of the United Kingdom is an entity with
no competitors, much as the United
States Postal Service is organized.
Thus, the fact that the term ‘British’
appears in BRITISH POST OFFICE does not
make it geographically descriptive, but
rather acts as the sole identifier to
the sole organization empowered to
deliver mail within the United Kingdom.
(Applicant’s October 31, 1997 response
to an Office action, unnumbered pp. 3-
4); and
(2) ...the term ‘British’ these days
means of or pertaining to the United
Kingdom, as there is no adjective
derived from ‘United Kingdom.’
It therefore follows that BRITISH POST
OFFICE can only refer to one
organization and one only, which is
Applicant. There can be no other post
office in the United Kingdom as a
result of the statute, and indeed there
is not one. Although the term ‘post
office’ is, as the Examining Attorney
suggests, a generic one in the sense
that it describes an organization or
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station as mentioned in the dictionary
description, such businesses are
national and once you identify the
nation, you have identified the
business. (emphasis in original)
(Applicant’s December 28, 1998 response
to an Office action, p. 3).
In order for a mark, or a portion thereof, to be
considered primarily geographically descriptive under
Section 2(e)(2), it is necessary to show that (i) the mark
or relevant portion is the name of a place known generally
to the public, and that (ii) the public would make a goods
and/or services/place association, that is, believe that
the goods and/or services for which the mark or relevant
portion is sought to be registered originate in that place.
See, e.g., University Book Store v. University of Wisconsin
Board of Regents, 33 USPQ2d 1385, 1402 (TTAB 1994); and In
re California Pizza Kitchen, Inc., 10 USPQ2d 1704 (TTAB
1988), citing In re Societe Generale des Eaux Minerals de
Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987).
Moreover, where there is no genuine issue that the
geographical significance of a term is its primary
significance, and where the geographical place named is
neither obscure nor remote, a public association of the
goods and/or services with the place may ordinarily be
presumed from the fact that the applicant’s goods and/or
services come from the geographical place named in the
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mark. See, e.g., In re California Pizza Kitchen, Inc.,
supra; and In re Handler Fenton Westerns, Inc., 214 USPQ
848, 850 (TTAB 1982).
The dictionary definitions establish a prima facie
case that the primary significance of the term “BRITISH” is
geographic. Even though the term “BRITISH” encompasses
“Great Britain,”2 it is a specifically defined geographic
area which is neither vague nor remote or obscure in the
context of consumer awareness.
Considering the first part of the test, we find the
evidence clearly establishes that “BRITISH” is the name of
a place known generally to the public. It identifies a
specifically defined geographic area, albeit involving more
than one political entity. See Burke-Parsons-Bowley Corp.
v. Appalachian Log Homes, Inc., 871 F.2d 590, 10 USPQ2d
1443, 1444 (6th Cir. 1989) (“Appalachian” in the mark
APPALACHIAN LOG STRUCTURES found to define a specific large
geographic region); and In re Mid-West Abrasive Co., 146
F.2d 1011, 64 USPQ 400 (CCPA 1945) (based primarily on a
dictionary definition, “Mid-West” found to refer to a
2 We take judicial notice of the following definitions from The
American Heritage Dictionary: (1) “Great Britain” is defined as
“An island off the western coast of Europe, occupying 88,745
square miles and comprising England, Scotland, and Wales.
Population 54,023,000. Also called ‘Britain’”; and (2) “United
Kingdom” is defined as “In full, United Kingdom of Great Britain
and Northern Ireland....” See TBMP §712.01.
Ser. No. 74/523981
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specific geographic place). Further, the term “BRITISH
POST OFFICE” retains the primarily geographic character of
“BRITISH” because, in the context of the entire mark, it
indicates the nation in which the involved “POST OFFICE” is
located, and from which the goods and services would
emanate.
This leads to a consideration of the second part of
the test, and there is no dispute that applicant is a
corporation of the United Kingdom (Great Britain) and is
located there. Thus, applicant has a specific and clear
legal connection to the place named in the mark, and in
fact, applicant is the government entity empowered to offer
the goods and services of a “post office” in Great Britain.
Applicant does not dispute that, if it commences use of
this mark for these goods and services, the goods and
services would emanate from Great Britain. Thus, we
presume a public association of the goods and services with
the place from the fact that applicant’s goods and services
would come from the geographical place named in the mark.
Because both parts of the enunciated test have been
met, we find BRITISH POST OFFICE is primarily
geographically descriptive. See In re Compagnie Generale
Maritime, 993 F.2d 841, 26 USPQ2d 1652 (Fed. Cir.
1993)(FRENCH LINE in stylized lettering for a wide variety
Ser. No. 74/523981
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of goods and services held primarily geographically
descriptive.) See also, In re California Pizza Kitchen
Inc., supra (the primary significance of the term
“California” in the mark CALIFORNIA PIZZA KITCHEN for
restaurant services held geographical – the terms PIZZA
KITCHEN were disclaimed); and In re Opryland USA Inc., 1
USPQ2d 1409 (TTAB 1986) (the primary significance of the
term “Nashville” in the mark THE NASHVILLE NETWORK for
television program production services and distribution of
television programming to cable television systems held
geographical).
We are not persuaded otherwise by applicant’s
arguments to the contrary. The term “POST OFFICE” in the
mark is generic (see applicant’s December 28, 1998
response, quoted previously herein) or, at best, highly
descriptive, of the goods and services involved herein.3
Because the geographical term identifies the nation
offering the “post office” related goods and services, the
3 We are aware that several of the separate services identified
in International Class 42 (e.g., “catering services,” “chemical
technological research”) are certainly not typical of the goods
and services most commonly offered by a post office. However,
International Class 42 also includes services such as “packaging
design services,” and “provision of facilities for exhibitions,”
both of which are in the more typical realm of possible services
offered by a post office. With regard to the other classes of
goods and services, it is clear that each of those International
Classes (9, 16, 38 and 39) involve the types of goods and
services generally offered by a post office.
Ser. No. 74/523981
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overall mark, BRITISH POST OFFICE, reinforces, rather than
detracts from, the conclusion that “British” has primarily
a geographical significance.
Applicant submitted copies of information from a
private database of a few registrations owned by the United
States Postal Service (all but one being expired) to show
that the United States Postal Service has exclusive rights
in its name (and presumably that applicant should have such
rights in its name); and the Examining Attorney submitted
photocopies of four registrations, two owned by the United
States Postal Service, one by the U.S. Department of
Commerce, and one by the British Tourist Authority, to show
that all four issued under Section 2(f) of the Trademark
Act or on the Supplemental Register, and that the Trademark
Act applies to all entities equally.
The Trademark Act contemplates that there is a subset
of applied-for marks which are not registrable on the
Principal Register in the absence of a showing that the
mark has achieved recognition as such. That is, the
statute generally excludes from word marks that are
registrable as inherently distinctive, words that are, for
example, “merely descriptive” or “primarily geographically
descriptive,” absent a showing of acquired distinctiveness.
See Wal-Mart Stores Inc. v. Samara Bros., 529 U.S. 205, 54
Ser. No. 74/523981
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USPQ2d 1065, at 1068-1069 (2000). In the case now before
us, the application is based on applicant’s assertion of a
bona fide intention to use the mark in commerce which may
be regulated by Congress. Applicant has made no claim that
use has commenced, and has not sought to invoke the
benefits of Section 2(f) of the Trademark Act, 15 U.S.C.
§1052(f).
We conclude that consumers are likely to believe that
BRITISH POST OFFICE is primarily geographically descriptive
of applicant’s various goods and services that would
emanate from Great Britain.
Decision: The refusal to register under 18 U.S.C.
§1729 is reversed, and the refusal to register under
Section 2(e)(2) is affirmed.