Trans Continental Records, Inc.

Trademark Trial and Appeal Board

Mar 11, 2002

No. 75628844 (T.T.A.B. Mar. 11, 2002)

3/11/02

Paper No. 13
ejs

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Trans Continental Records, Inc.
________

Serial No. 75/628,844
_______

Howard N. Aronson & Seana F. C. LaPlace of Lackenbach
Siegel Marzullo Aronson & Greenspan, P.C. for Trans
Continental Records, Inc.

Susan Kastriner Lawrence, Trademark Examining Attorney, Law
Office 116 (Meryl L. Hershkowitz, Managing Attorney)
_______

Before Simms, Cissel and Seeherman, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Trans Continental Records, Inc. seeks registration on
the Principal Register of the mark O-TOWN RECORDS
INCORPORATED and design, as shown below, with the words
RECORDS and INCORPORATED disclaimed, for “pre-recorded
compact discs, audio cassettes, and video cassettes
featuring pop music; jewelry; paper goods and printed
matter, namely, posters, bookcovers, postcards and
THIS DISPOSITION
IS CITABLE AS PRECEDENT
OF THE T.T.A.B.

Ser No. 75/628,844
2
unmounted photographs; leather goods, namely, backpacks and
fanny packs; clothing, namely, hats, t-shirts and jackets;
and entertainment in the nature of live performances by a
pop musical group.”1

The Examining Attorney has made final a requirement
that applicant disclaim exclusive rights to the name O-TOWN
on the ground that this term is geographically descriptive
of the identified goods and services.
Applicant has appealed. Applicant and the Examining
Attorney have filed briefs,2 but an oral hearing was not
requested.

1 Application Serial No. 75/628,844, filed January 27, 1999, and
asserting a bona fide intention to use the mark in commerce.
2 With its brief applicant has submitted exhibits taken from
various web search engines. The Examining Attorney has objected
to this material because it was not made of record during the
prosecution of the application. Trademark Rule 2.142(d)
provides, in part, that the record in the application should be
complete prior to the filing of the appeal. Because the exhibits
were not made of record prior to the filing of the appeal, they
have not been considered.
Ser No. 75/628,844
3
Section 6(a) of the Trademark Act, 15 U.S.C.
§ 1056(a), provides, in relevant part, that the Director
may require the applicant to disclaim an unregistrable
component of a mark otherwise registrable. Section 2(e)(2)
of the Trademark Act, 15 U.S.C. § 1052(e)(2), prohibits the
registration of marks which, when used on or in connection
with the goods of the applicant, are primarily
geographically descriptive of them.
A mark is considered to be primarily geographically
descriptive if (1) it is the name of a place and this place
is known generally to the public, and (2) the public would
make a goods/place association, that is, believe that the
goods or services for which the mark is sought to be
registered originate in that place. See In re Urbano, 51
USPQ2d 1776 (TTAB 1999); In re California Pizza Kitchen,
Inc., 10 USPQ2d 1704 (TTAB 1988). 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. In re Harvey & Sons
Ltd., 32 USPQ2d 1451 (TTAB 1994); In re Handler Fenton
Westerns, Inc., 214 USPQ 848 (TTAB 1982).
Ser No. 75/628,844
4
It is the Examining Attorney’s position that O-TOWN is
geographically descriptive of the identified goods and
services because it is a nickname for the city of Orlando,
Florida. Because applicant is located in Orlando, a
goods/place association between applicant’s goods and
services and Orlando may be presumed.
In support of the refusal, the Examining Attorney has
submitted a number of articles taken from the NEXIS data
base. Because applicant contends that O-TOWN is a remote
and obscure term, we will examine this evidence in some
detail.
With the first Office action the Examining Attorney
indicated that she had searched for stories in which the
term O TOWN appeared within 10 words of ORLANDO. Seventy-
three stories were found with this criteria, and the
Examining Attorney printed fourteen. Of these, nine were
from the “Orlando Sentinel,” and three were from other
Florida newspapers. The remaining two articles were from
the “Washington Post” and the “Washington Times” and appear
to refer to applicant (Lou Pearlman is one of applicant’s
principals):
Amazed at their [New Kids on the Block]
earning power, Pearlman envisioned an
Orlando-based company to rival Motown—
hence, O-town.
Ser No. 75/628,844
5
Then again, O-town’s raw material is
vastly different from what Berry Gordy
found in the black working-class
neighborhoods of Detroit.
“Washington Post,” March 19, 1999

‘N Sync is part of a growing teen-pop
empire based in Orlando, Fla., which is
being called O-Town (a riff on Motown,
according to executives). O-Town has
the knack for producing hit groups
(such as the popular Backstreet Boys),
but ‘N Sync has exceeded expectations.
“Washington Times,” March 18, 1999

With the final Office action the Examining Attorney
did a search for stories in which O TOWN and either FLORIDA
or ORLANDO appeared. This search produced 441 “hits,” and
the Examining Attorney submitted ten of them.
Two of these stories were also from the “Orlando
Sentinel.” Of the others, three do not appear to refer to
the city of Orlando at all:
“Rocko’s Modern Life: Rocko’s Modern
Christmas” –Rocko plans a Christmas
party and invites his new neighbors,
the Elves. Bad rumors spread around O-
Town about the Elves, and no one shows
up at Rocko’s party. [synopsis of TV
show]
“News & Record” (Greensboro, NC),
November 25, 1995

The O Town Blades of Cincinnati took
first place in the 16-and-older five-
on-five division at the Columbus Triple
Crown Street Hockey tournament last
weekend.
“The Cincinnati Enquirer,” June 30,
1995

Ser No. 75/628,844
6
Rising on the charts as they go, the
Lakers’ Studs played on before a packed
house at Veterans Memorial Coliseum,
with the heavy dose of that O-town
sound.
That, of course, would be Orlando
Woolridge who, after a season of having
his roster spot questioned, has become
number zero with a bullet for the
Lakers....
“Los Angeles Times,” May 29, 1989

Four of the articles are written about the Orlando
Magic, and reference O-town as a nickname for the city of
Orlando. For example:
It helped mightily that the Magic hit
the NBA draft jackpot in consecutive
years, bringing the best young center,
Shaquille O’Neal, and the best young
point guard, Penny Hardaway, to O-town.
“The Houston Chronicle,” October 27,
1996

“If we can get a win in Game 4, then do
it on Friday,” Scott dreamed, “then we
won’t lose if we get back to O-Town.”
“Daily News” (New York), June 13, 1995

One additional article in this search refers generally to
Orlando as O-town:
Look in the Yellow Pages under Sitting
Services –and check out O-town’s
nightlife.
“Atlanta Journal and Constitution,”
December 29, 1993

The Examining Attorney also did a search for articles
in which O TOWN appeared within five words of NICKNAME
which in turn appeared within fifteen words of ORLANDO, and
Ser No. 75/628,844
7
found one reference, which indicates that O-TOWN is not
only a nickname for the city of ORLANDO, but the name of a
musical group developed by applicant’s principal:
He [Lou Pearlman] brings the finalist
for further development to Orlando,
from where the nickname of the city –
O-Town—is used for the group’s name.
“Chicago Tribune,” March 23, 2000

Finally, the Examining Attorney conducted a search for
articles in which O TOWN appears within five words of
MUSIC. This search retrieved 22 stories, of which the
Examining Attorney submitted seven. Five of these were
from the “Orlando Sentinel” or other Florida papers. Of
the remaining two, one references O TOWN in connection with
a type of music, and the other, while indicating that O-
Town refers to Orlando, also indicates that it is the
location for applicant’s principal’s business:
With their rise, [boy singing groups]
what used to be called “bubble-gum
music” earned a new nickname—“The O-
Town Sound.”
“Arizona Republic,” December 12, 1999

There’s no denying the larger, star-
making orchestrations. O-Town, short
for Orlando, where Pearlman’s music
complex is based, has, in several
months, made connections that musicians
....
“The Record” (Bergen County, NJ)

Finally, the Examining Attorney submitted evidence
obtained from two websites which mention “O-TOWN.” One is
Ser No. 75/628,844
8
from the website of an Orlando newspaper, the “Orlando
Business Journal,” while the other is from a website called
angelfire.com, and includes the following two pages:
headline: o-town big-timers (for the
obsessed Floridian fan)
This page has to do everything and
anything that ‘N Sync has done (or
doing) in their home of Orlando,
Florida.
***
headline: Rocking Rollin’ With the O-
Town Boys
[large picture of Backstreet Boys]
Hello & Welcome To All Backstreet Boys
Fans! This is my first ever homepage
so please bear with me....
www.angelfire.com

Based on this evidence, we find that O-TOWN is a
relatively obscure geographic reference for the city of
Orlando, Florida. Although people in Orlando and parts of
Florida may be aware of the nickname, we cannot say, based
on the evidence of record, that consumers elsewhere in the
country are aware that O-TOWN is another name for the city
of Orlando. Quite simply, the limited number of articles
reflecting that O-TOWN is a nickname for Orlando is not
sufficient for us to conclude that O-TOWN is anything but
an obscure geographic term. As our principal reviewing
Court, in In re Societe Generale des Eaux Minerales de
Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450, 1451 (Fed. Cir.
1987), commented, “[i]t is indeed remarkable to see the
Ser No. 75/628,844
9
thoroughness with which NEXIS can regurgitate a placename
casually mentioned in the news.” The same can be said of
the NEXIS stories which are of record herein. Similarly,
the evidence from the single website which is not from an
Orlando newspaper is not persuasive that O-TOWN is
generally known as a geographic location. There is no
evidence as to whether this website has been accessed by a
significant number of people. And, in view of the
amateurish nature of the text (“This is my first ever
homepage so please bear with me”), we cannot regard the
author’s view of “O-TOWN” as a nickname for Orlando to be
indicative of the perception of the public at large.
We are also concerned by the fact that in the NEXIS
search for stories in which O TOWN appeared with the words
FLORIDA or ORLANDO, a search which retrieved 441 articles,
the Examining Attorney made of record story numbers 257,
303, 325, 330, 331, 337, 369, 411, 435 and 437. Although
the Examining Attorney described these articles as a
“sample,” we do not understand why the first article she
chose to submit was number 257, and therefore we have
difficulty regarding the ten articles as a representative
sample. This evidence certainly gives some credence to
applicant’s assertion that O-TOWN is recognized as the name
of its band, and not of the city.
Ser No. 75/628,844
10
We consider this case to be similar to ConAgra Inc. v.
Saavedra, 4 USPQ2d 1245 (TTAB 1987), which involved the
question of whether TAPATIO, which is defined as a person
or thing from Guadalajara, is primarily deceptively
geographically misdescriptive for goods not originating in
Guadalajara. The Board stated, at 4 USPQ2d 1249:
while Guadalajara may be a large, well
known city in Mexico, the question is
how many people in the United States
would know the geographical
significance of "tapatio," that is, how
many people would know it relates to
persons or things Guadalajaran? We
think the record in this case is
inadequate to show that a significant
portion of consumers purchasing
meatless hot sauce would, upon seeing
TAPATIO on a container of meatless hot
sauce, conclude that it relates to a
place name and that the product came
from that place, rather than concluding
that it is simply a trademark of a
manufacturer engendering a Spanish
connotation. ... We conclude,
therefore, that since the geographical
significance of the term “tapatio” is
lost on the public because of
obscurity, it is, in effect, an
arbitrary designation....

In view of our finding that O-TOWN is a relatively
obscure term which would not be perceived as a geographic
reference to Orlando, the fact that the Examining Attorney
has demonstrated a goods/place association between
applicant’s goods and services and the city of Orlando,
Florida is of no moment.
Ser No. 75/628,844
11
Decision: The requirement for a disclaimer of O-TOWN
is reversed.