Topson Downs of California, Inc.

Trademark Trial and Appeal Board

Dec 4, 2012

No. 85067696 (T.T.A.B. Dec. 4, 2012)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: December 4, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Topson Downs of California, Inc.
________

Serial No. 85067696
_______

Erica Van Loon of Glaser Weil Fink Jacobs et al LLP for
Topson Downs of California, Inc.

Tasneem Hussain, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Quinn, Cataldo and Wolfson,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Topson Downs of California, Inc., filed an
application to register as a mark TINSELTOWN in standard
characters on the Principal Register for
belts; blazers; bottoms; capris; dresses; hats;
headwear; hooded sweatshirts; jackets; jeans;
pants; shirts; shorts; skirts; sweaters;
sweatpants; sweatshirts; tops; t-shirts; [and]
vests

Ser. No. 85067696
2
in International Class 25.1
The trademark examining attorney refused registration
under Section 2(e)(2) of the Trademark Act, 15 U.S.C.
§ 1052(e)(2), on the basis that applicant’s mark is
primarily geographically descriptive of applicant’s goods.
In addition, pursuant to Trademark Rule 2.61(b) the
examining attorney required applicant to indicate where its
goods will originate and argues that applicant has failed
to properly respond to the information request.
When the refusal and requirement were made final,
applicant appealed. Applicant and the examining attorney
filed briefs, and applicant filed a reply brief.2
Evidentiary Matter
Applicant submitted three evidentiary exhibits for the
first time with its main brief. By way of explanation,
applicant stated the following:
Applicant brings this information to the Board’s
attention, not as impermissible new evidence, but
to demonstrate the unpersuasive quality of the
Examiner’s evidence.3 (Exhibit 1);

Applicant submits these records and search
results not as impermissible new evidence but to
explain the Examiner’s record evidence.

1 Application Serial No. 85067696 was filed on June 21, 2010,
based upon applicant’s assertion of a bona fide intent to use the
mark in commerce on or in connection with the goods.
2 Applicant’s motion to extend the time in which to file its
reply brief is moot inasmuch as the reply brief was filed within
the required time period.
3 Applicant’s brief, p. 6, fn 1, cont’d.
Ser. No. 85067696
3
Applicant therefore respectfully requests that
the Board consider this explanatory evidence.4
(Exhibit 2); and

The examiner’s additional Internet evidence
regarding third party use of the term
“Tinseltown” reproduced poorly as attached to the
Office Action. In its response to the Office
Action, Applicant argued against the evidence as
best it could but reserved the right to comment
further. Applicant has now independently
downloaded this evidence, true and correct copies
of which are attached hereto as Exhibit 3, and
supplements its previous arguments.5 (Exhibit 3).

The examining attorney objected to this evidence. In
its reply brief, applicant stated as follows:
Applicant addressed the examiner’s Internet
evidence in its response to the April 19, 2011
Office Action. Because of the quality of the
attached evidence, Applicant believed it was
within its rights to reserve further comment, if
necessary, which it made in its Appeal Brief. …
Therefore, to the extent that Applicant’s
objections were not first introduced in the
Appeal Brief, they should be considered.
Applicant’s objections were timely and preserved
its arguments for its response to the final
Office Action on reconsideration and on appeal.6

Applicant is correct that it may present arguments in
its briefs addressing the probative value of the examining
attorney’s evidence, and pointing out any weaknesses in
such evidence. However, Trademark Rule 2.142(d) provides
that the record in an application should be complete prior
to the filing of the appeal. Notwithstanding that the

4 Id., fn 2.
5 Id. at 12.
Ser. No. 85067696
4
exhibits applicant submitted with its brief were in
response to evidence submitted with the examining
attorney’s first or final Office action, applicant had an
opportunity to file this evidence with its request for
reconsideration, prior to the appeal. It was also possible
to request remand of the application to submit additional
evidence after appeal, if good cause was shown. See TBMP
§1207.02 (3d ed. rev. 2012). What is not acceptable is for
an applicant simply to submit evidence with an appeal
brief, at a point where the examining attorney has no
opportunity to submit evidence in response.
Simply put, applicant’s submission of new evidence
with its appeal brief is untimely. Further, applicant’s
attempts to characterize this evidence as argument or
comment fails either to change the evidence into something
else, namely, argument, or render it timely submitted.
Finally, to the extent that a small portion of these
submissions are reproductions of evidence timely made of
record by the examining attorney, such submissions are
cumulative and unnecessary, particularly inasmuch as the
copies made of record by the examining attorney appear to
have reproduced sufficiently well. Accordingly, while we

6 Reply brief, p. 3.

Ser. No. 85067696
5
have considered applicant’s arguments addressing the
strength or weakness of the examining attorney’s evidence,
the exhibits accompanying applicant’s appeal brief have not
been considered in reaching our decision.7
Requirement For Information
In the first Office action, the examining attorney
required applicant to “provide a written statement
specifying where its goods will come from or will
originate.”8 Applicant’s response stated:
Based on the above [response to the refusal to
register under Section 2(e)(2)], Applicant
believes that it is not required to provide
additional information as to the origin of the
goods covered in the application, as such
information is irrelevant under the “Hollywood”
analysis. Applicant therefore declines, at this
time, to provide additional information. By this
statement, Applicant acknowledges the request and
Applicant’s refusal to provide information should
not be construed as grounds for refusal per se.9

In the subsequent, and final April 19, 2011 Office
action, the examining attorney, noting that applicant did
not provide information regarding the origin of its goods,
repeated the requirement and again advised applicant that
failure to comply can be grounds for refusing registration.
In its October 19, 2001 request for reconsideration,
applicant responded as follows:

7 We hasten to add, however, that even if the evidence were
considered, it does not compel a different result in this appeal.
Ser. No. 85067696
6
Applicant responds that its goods will originate
in various locations both inside and outside
California.10

Under Trademark Rule 2.61(b), 37 CFR 2.61(b), an
examining attorney may require the applicant to furnish
such information and other materials “as may be reasonably
necessary to the proper examination of the application.”
This Board has previously affirmed refusals of registration
on the basis of an applicant’s noncompliance with a
requirement under Rule 2.61(b). See, e.g., In Re
Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008)
(requirement for information affirmed where applicant
failed to acknowledge repeated requests and reminders to
submit information as to geographic origin of applicant’s
goods); In re Planalytics Inc., 70 USPQ2d 1453, 1457-58
(TTAB 2004) (requirement for information affirmed where
applicant's only response was to refer the examining
attorney to its website); In re DTI Partnership LLP, 67
USPQ2d 1699, 1700 (TTAB 2003) (requirement for information
affirmed where applicant “did not specifically address or
acknowledge” the requirement for information); and In re

8 September 28, 2010 Office action, p. 3.
9 Applicant’s March 28, 2001 communication, p. 4.
10 Applicant’s October 19, 2011 communication, p. 7.
Applicant’s request for reconsideration was denied in an Office
action issued on November 7, 2011.

Ser. No. 85067696
7
SPX Corp., 63 USPQ2d 1592, 1597 (TTAB 2002) (requirement
for information affirmed where applicant “totally ignored”
request for information). See also, TMEP § 814 (October
2012) and authorities cited therein.
In this case, applicant has not ignored the examining
attorney’s request for additional information, nor has
applicant ultimately refused to comply. Rather, applicant
has responded by indicating that “its goods will originate
in various locations both inside and outside California.”
We agree with the examining attorney that applicant’s
original response is unacceptable. The examining attorney
argues that applicant’s “second response was disingenuous
because the statement encompasses the entire universe.”11
On the other hand, applicant argues that it is not required
“to identify a specific origin of the goods when Applicant
has not yet made that decision.”12 On this record, we have
no basis to question applicant’s assertion that it has not
yet selected the location(s) in which its goods will
originate. Accordingly, we find that with its second
response applicant has complied with the examining
attorney’s requirement for information under Trademark Rule
2.61(b).

11 Examining attorney’s brief, unnumbered p. 10.
12 Applicant’s reply brief, p. 5.
Ser. No. 85067696
8
We note, nonetheless, that in the absence of any
addition evidence, we only have applicant’s very broad
statement regarding the location(s) in which its goods will
originate. As noted by the examining attorney, applicant’s
goods may originate anywhere. In consequence thereof, we
will infer that the locations inside California in which
applicant’s goods will originate include the area of Los
Angeles known as Hollywood. Cf. Cheezwhse.com, 85 USPQ2d
at 1919.
Geographic Descriptiveness
In support of the position that the applied-for mark
is primarily geographically descriptive, the examining
attorney made of record the following dictionary
definitions of Tinseltown:
Hollywood (humorous);13
Hollywood, Calif.;14
Hollywood: Hollywood and the U.S. movie industry
regarded as a place of insubstantial glamour (informal
disapproving);15 and
(Placename) an informal name for Hollywood.16
The examining attorney further made of record the following
dictionary definitions of Hollywood:

13 www.macmillandictionary.com
14 www.yourdictionary.com
Ser. No. 85067696
9
Section of Los Angeles, Calif., once the site
of many U.S. film studios; hence, the U.S. film
industry or its life, world, etc.
City on the SE coast of Fla: pop. 139,000;17
Section of Los Angeles, California NW of the
downtown district;
City SE Florida N of Miami pop 139,357;18

The NW part of Los Angeles, Calif.: center of
the American motion-picture industry;
A city in SE Florida, near Miami: seaside
resort;19 and

Mod. having phony glitter: who is this
Hollywood dame who just came in?
A gaudily dressed person in sunglasses. (Also
a term of address.) Ask Hollywood over there to
take off his shades and make himself known.20

In addition, to show a goods/place association the
examining attorney made of record printed copies of
internet web pages in which the term Tinseltown or
Hollywood is used in connection with clothing and fashion.
The following examples are illustrative:
Hollywood Fashion Week
It should be no surprise that such an affluent
and desirable destination and the capitol of
Bling…
Hollywood finally has a fashion week to call its
own.
Hollywood Fashion Week® promises the infusion of
fashion, music, and style into a week-long series
of events put on like no other city.;21

15 www.encarta.msn.com
16 www.thefreedictionary.com
17 www.yourdictionary.com
18 www.merriam-webster.com
19 www.dictionary.reference.com
20 Dictionary of American Slang and Colloquial Expressions (McGraw
2007).
21 www.hollywoodfashionweek.com
Ser. No. 85067696
10
Hollywood & Media Influence on Society’s Fashion
How Clothing Trends Have Been Impacted by
Celebrity Trendsetters
Media influence helped Clark Gable, James Dean,
Marlon Brando, Elizabeth Taylor and Rosalind
Russell to heavily impact clothing trends during
Hollywood’s golden age. …;22

2007 Tinseltown fashion trends
The trendiest A-listers served up some hot
Hollywood style this year. From Katie Holmes’
dramatic new do to Resse Witherspoon’s
sensational “break-up” makeover, red-carpet glam
put the power into this year’s posh factor.
Discover the styles that shook up showbiz in
’07.;23

Celebrate Your Wedding Day In Tinseltown Fashion
InStyle Weddings has the “hot list” of how to
celebrate your wedding day Hollywood-Style.
Homegrown Hospitality
Give your out of town guests some local flavor,
filling welcome bags with goodies your wedding
city is famous for. We love Neighborhoodies – a
local Brooklyn company – will custom-make a
totebag for you for wherever your wedding is
held.;24 and

Stars Celebrate Hollywood Fashion Gurus at
Costume Designers Guild Awards
Some of fashion’s most important movers and
shakers make their living on the big screen and
on Tuesday actors and actresses honored the
people that make them look so good on camera at
the 2011 Costume Designers Guild Awards. …25

The test for determining whether a mark is primarily
geographically descriptive under Section 2(e)(2) of the
Trademark Act is whether (1) the mark (or a portion

22 www.suite101.com
23 www.ctv.ca/CTVNews.com
24 www.weblogs.wpix.com
25 www.etonline.com

Ser. No. 85067696
11
thereof) is the name of a place known generally to the
public, and (2) the public would make a goods/place
association, that is, believe that the goods identified in
the application originate in that place. See 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). If the goods do in fact originate
from the place named in the mark, the requisite goods/place
association can be presumed. See In re Handler Fenton
Westerns, Inc., 214 USPQ 848 (TTAB 1982).
We turn then to the question of whether the term
sought to be registered, i.e., TINSELTOWN, primarily
denotes a geographical place. Based upon the evidence of
record, it is clear that Tinseltown is a term used, with
varying degrees of approval, to refer both to the Hollywood
section of Los Angeles, California as well as the motion
picture industry – with the attendant glitz and glamour -
for which it has become famous. To state the obvious, the
record clearly supports a finding that Hollywood denotes a
section of Los Angeles, California and also the motion-
picture industry once exclusively located in Hollywood and
now located in various parts of Los Angeles, as well as the
iconic styles associated therewith and its often desperate
Ser. No. 85067696
12
imitators.26 Thus, the term Tinseltown denotes, inter alia,
a nickname for the geographic place known as Hollywood,
located in Los Angeles, California. It is settled that a
nickname of a geographic location is treated the same as
the actual name of the geographic location, if it is likely
to be perceived as such by the purchasing public. See In
re Spirits of New Merced, LLC, 85 USPQ2d 1614 (TTAB 2007);
and In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998).
However, on this record, Tinseltown also denotes the movie
industry, its stars, and the fashion and style trends they
have made famous. Indeed, the examining attorney’s own
evidence, excerpted above, suggests that it is the latter
meaning, namely, that of the movie industry, that may be
the primary denotation of the term Tinseltown as used in
relation to applicant’s goods. We find, therefore, that
the examining attorney has failed to establish that the
primary significance of Tinseltown is a geographic
location.

26 We note in addition that Hollywood denotes a small resort city
near Miami, Florida. However, it is settled that merely because
the term in question identifies more than one geographic location
does not necessarily detract from the term’s primary geographic
significance. See, e.g., In re Loew’s Theatres, Inc., 769 F.2d
764, 226 USPQ 865 (Fed. Cir. 1985); and In re Cambridge Digital
Sys., 1 USPQ2d 1659, 1662 (TTAB 1986).

Ser. No. 85067696
13
In regard to the term Hollywood, this tribunal has
previously held that
in view of the other prominent, significant
meaning of the term “Hollywood” as referring to
the entertainment industry in general, we find
that the Examining Attorney has not established
that the primary significance of the term
“Hollywood” is that of a geographic location in
California. That is, the record does not
establish that to the purchasing public the
primary connotation of the term “Hollywood” is
the particular California town and not the
general entertainment industry.

In re International Taste Inc., 53 USPQ2d 1604, 1605 (TTAB
2000). See also In re Municipal Capital Markets Corp., 51
USPQ2d 1369 (TTAB 1999); and In re Dixie Insurance Company,
223 USPQ 514 (TTAB 1984). In distinguishing the
International Taste decision from the instant case, the
examining attorney argues that
In this case, the mark TINSELTOWN could just as
well refer to the geographic location known as
Hollywood but even if it has the same connotation
as the entertainment aspect of Hollywood, the
fashion industry goes hand in hand with the
entertainment industry. In fact, applicant
states that “Hollywood is synonymous with the
film industry, glamour and a particular American
lifestyle.”27

However, the examining attorney’s arguments do not overcome
the evidence that the terms Tinseltown and Hollywood denote
the movie industry itself, its members and imitators at
least as significantly as a geographic area. That is to
Ser. No. 85067696
14
say, even if we accept that the entertainment industry and
fashion industry are closely related, it remains that the
term Tinseltown possesses a prominent and significant
meaning other than that of a geographic location. Thus, we
find the facts of the case before us to be quite similar to
the facts in International Taste. Simply put, the term
Hollywood refers both to a geographic location and the
motion picture industry. Its nickname, Tinseltown, refers
even more strongly to the motion picture industry than it
does to a geographic location.
In view of our finding that the term Tinseltown is not
primarily a geographical term, we need not reach the
question of whether the examining attorney has established
a goods/place association between the term and the applied-
for goods. As a result, even if we infer, as discussed
above, that applicant’s goods originate in Hollywood, a
geographic area that together with other locations in the
Los Angeles area has been nicknamed Tinseltown, the
examining attorney cannot prevail in this case because the
record of this case does not support a finding that the
primary significance of Tinseltown is a geographic term.
Based upon the evidence in this case, including any
evidence not specifically discussed herein, we find that

27 Examining attorney’s brief, unnumbered p. 8-9.
Ser. No. 85067696
15
the primary significance of the term comprising applicant’s
mark is not a geographic term. To the extent that there is
any doubt as to the primary significance of the term
TINSELTOWN, we resolve doubt in favor of the applicant.
See In re John Harvey & Sons Ltd., 32 USPQ2d 1451, 1455
(TTAB 1994).
Decision: The refusal of registration is reversed,
and the application will be forwarded for publication in
the Official Gazette.