William Aichast

Trademark Trial and Appeal Board

Jul 3, 2001

No. 75803693 (T.T.A.B. Jul. 3, 2001)

7/3/01
Paper Nos. 11 & 10
DEB
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re William Aichast
________
Serial Nos. 75/803,266 & 75/803,693
_______
Robert T. Johnson, Jr., Sana Hakim and Andrea K. Cannon of Bell
Boyd & Lloyd LLC for William Aichast.
Douglas M. Lee, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
_______
Before Cissel, Hanak and Buche
Judges.
Opinion by Bucher, Administrat
William Aichast has filed
SPEEDWAY for “license plate ho
bumper stickers.”2
The Trademark Examining A
the ground that this proposed
goods, would be primarily geog
misdescriptive of the applican
1 Application Serial No. 75/8
based upon applicant’s allegatio
mark in commerce on the goods li
2 Application Serial No. 75/8
1999, based upon applicant’s all
use the mark in commerce on the
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTABr, Administrative Trademark
ive Trademark Judge:
applications to register SANTA FE
lders”1 and for “calendars and
ttorney refused registration on
mark as a whole, if applied to the
raphically deceptively
t’s license plate holders,
03,266, filed on September 20, 1999,
n of a bona fide intention to use the
sted in Int. Cl. 12.
03,693, also filed on September 20,
egation of a bona fide intention to
goods listed in Int. Cl. 16.
Serial No. 75/803,266 & 75/803,693
- 2 -
calendars and bumper stickers, and is thereby barred from
registration by Section 2(e)(3) of the Trademark Act, 15 U.S.C.
§1052(e)(3).
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney filed briefs. An oral
hearing was not requested.
We affirm the refusal to register.
In order to establish a prima facie case for refusal of
registration under Section 2(e)(3), the Trademark Examining
Attorney must show that prospective purchasers of the goods
would believe that the goods for which the mark is sought to be
registered originate in the geographic place named in the mark
when, in fact, the goods do not originate in that geographic
place. See In re Wada, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir.
1999) [NEW YORK WAYS GALLERY for various types of bags,
backpacks, purses, etc., not from New York was held
unregistrable under Section 2(e)(3)], and In re Loew’s Theaters,
Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985) [DURANGO held
unregistrable for chewing tobacco not from Mexico].
The Trademark Examining Attorney argues that applicant’s
mark is barred from registration because the primary
significance of applicant’s mark as a whole is the geographic
place, Santa Fe, New Mexico. In support of this portion of his
prima facie case, the Trademark Examining Attorney offered
Serial No. 75/803,266 & 75/803,693
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evidence to show that the city of Santa Fe, New Mexico, is a
place that is neither obscure nor remote. In particular, the
Trademark Examining Attorney introduced listings for “Santa Fe”
from The American Places Dictionary (1994) and Merriam-Webster’s
Geographical Dictionary (3rd ed. 1997).
The Trademark Examining Attorney also argues that there is
an association between the goods in applicant’s application and
the city of Santa Fe, New Mexico. In support of this portion of
his prima facie case, the Trademark Examining Attorney has
introduced evidence establishing that Santa Fe, New Mexico, is a
major tourist center of the Southwest. Further, excerpts
retrieved from the LEXIS/NEXIS database contain statements about
license plate holders being souvenirs associated with tourists’
destination and specific references to calendars and bumper
stickers being marketed and displayed in the city of Santa Fe.
Finally, applicant is located in Illinois, and there is
nothing in the record to indicate that applicant’s goods have
their origin in, or are in any connection with, Santa Fe, New
Mexico. In fact, in response to the Trademark Examining
Attorney’s specific inquiry, applicant concedes that its goods
will have absolutely no connection with Santa Fe, New Mexico.
Both the Trademark Examining Attorney and applicant’s
counsel have agreed that Santa Fe is a city in New Mexico.
However, while applicant does not contend that Santa Fe, the
Serial No. 75/803,266 & 75/803,693
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capital city of New Mexico, is obscure or relatively unknown, he
does argue that even the term “Santa Fe,” taken alone, is not
“primarily geographical.” See 2 J.T. McCarthy, McCarthy on
Trademarks and Unfair Competition, §14.18 (4th Ed. 1999).
Applicant argues that for many Americans, “Santa Fe” evokes
images of the popular Santa Fe Railroad, having 33,500 miles of
tracks covering twenty-eight states. Additionally, applicant
argues that especially as applied to these items, “… the
Trademark Attorney has not identified anyone in the Santa Fe,
New Mexico area that uses the mark for such goods.” Further,
applicant argues that the mere “… fact that calendars and
souvenirs are available in stores located in Santa Fe, New
Mexico … is not persuasive evidence that the public will
associate Santa Fe, New Mexico with calendars and bumper
stickers.”
While it is true that license plate holders, calendars and
bumper stickers may be sold almost everywhere, it is much more
likely that, for example, license plate holders, calendars and
bumper stickers having the designation SANTA FE SPEEDWAY would
be sold in, or would originate from, Santa Fe, New Mexico, than
elsewhere. In short, we agree with the Trademark Examining
Attorney’s assessment of this case. Because applicant’s mark
includes the term “Santa Fe,” consumers would make the
association with Santa Fe, New Mexico.
Serial No. 75/803,266 & 75/803,693
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Applicant and the Trademark Examining Attorney also
disagree over the significance of the additional, arbitrary term
SPEEDWAY within the composite mark. The Trademark Examining
Attorney argues that the presence of this term does not create a
composite having a non-geographic connotation.
Contrariwise, applicant takes the position that the word
SPEEDWAY takes the mark as a whole out of being “the name of a
place known generally to the public.” To rebut the Trademark
Examining Attorney’s prima facie case, applicant contends that
its mark SANTA FE SPEEDWAY is not, when considered in its
entirety, the name of a geographic place.
The mark SANTA FE SPEEDWAY, when analyzed as a
whole, is not primarily geographically
deceptively misdescriptive because ‘Santa Fe
Speedway’ does not connote a specific geographic
place to reasonable consumers.
(Applicant’s reply brief, p. 3).
Further, applicant argues that the Trademark Examining
Attorney has violated the anti-dissection rule, giving too
little weight to SPEEDWAY – a totally arbitrary component of
this mark.
The Trademark Examining Attorney acknowledges that the
entire mark is more than the name of New Mexico’s capital city.
However, the Trademark Examining Attorney argues that the
overall impression of applicant’s mark does not detract from the
geographic significance of the word “Santa Fe” contained within
Serial No. 75/803,266 & 75/803,693
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the mark. According to the Trademark Examining Attorney, the
mark as a whole still emphasizes that applicant’s goods have
their origin in the city of Santa Fe, New Mexico.
The word “speedway” suggests the existence of an actual
motor speedway, and further suggests that these license plate
holders, calendars and bumper stickers are collateral goods
sponsored by the motor speedway under that name. Nonetheless,
adding the word “speedway” to the place name “Santa Fe” does not
overcome the primarily geographic significance of the mark as a
whole. Rather, the geographic significance of the mark remains.
In this regard, the Trademark Examining Attorney has shown
that the DAYTONA INTERNATIONAL SPEEDWAY is located in Daytona
Beach, the INDIANAPOLIS MOTOR SPEEDWAY is located in
Indianapolis, the ATLANTA MOTOR SPEEDWAY is located in Atlanta,
etc. Hence, it would be reasonable for prospective consumers to
assume that the SANTA FE SPEEDWAY is located in Santa Fe.
In short, we find the term SPEEDWAY that applicant has
added to the SANTA FE designation, though arbitrary in relation
to license plate holders, calendars and bumper stickers,
nonetheless tends to reinforce, not to detract from, the primary
geographical connotations of the mark, considered in its
entirety. Applicant simply has not provided any facts as to why
– provided we find SANTA FE alone to be primarily geographical –
the primary geographic significance of the composite mark is
Serial No. 75/803,266 & 75/803,693
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lost by the addition of this term. Certainly, the determination
of registrability under Section 2(e)(3) of the Lanham Act should
not depend upon whether a composite mark is or is not unitary.
In re Cambridge Digital Systems, 1 USPQ2d 1659, 1662 (TTAB
1986). See also In re Nantucket Inc., supra, at 893, n. 7; and
In re Handler Fenton Westerns, Inc., 214 USPQ 448 (TTAB 1982).
As Professor McCarthy has observed, “[i]f the composite
mark contains the name of the geographic location from which the
goods do not come, a court may be more strict in its scrutiny….”
2 J.T. McCarthy, McCarthy on Trademarks and Unfair Competition,
§14:11 (4th ed. 1998). In the Wada case, this Board adopted
just such an approach, and faulted the applicant therein for not
providing “any facts as to why, in its view, the primary
geographic significance of the mark is lost” by the addition of
even arguably arbitrary words. See In re Wada, 48 USPQ2d 1689,
1690 (TTAB 1998).
Applicant argues, moreover, that when the word “SPEEDWAY”
is added to the words “SANTA FE,” this composite mark, if it has
any meaning at all to members of the public, will evoke images
of a former race track in Chicago. We agree that the mark
clearly suggests a connection to motor sports. However, we find
that most consumers would likely be mislead into thinking that
the license plate holders, calendars and bumper stickers are
from New Mexico, and specifically a motor speedway in the Santa
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Fe area. On the other hand, it is not incumbent upon the
Trademark Examining Attorney to prove that Santa Fe, New Mexico,
has, or does not have, any racing in the general area, or that
Santa Fe has, or does not have, an actual attraction known as
the “Santa Fe Speedway.”3
Conversely, applicant, a resident of Chicago, may find a
market in the Midwest by tapping into nostalgia over a now
defunct clay track for motorcycles and stock cars. However,
that does not change the result herein. It would be relevant to
our determination herein if the record showed that a substantial
portion of the American population was aware of the actual Santa
Fe Speedway – a dirt track that has been closed for years. If
the record showed that this Chicago area track had once been
nationally famous and that these license plate holders,
calendars and bumper stickers represented some kind of
commemorative items for that once famous track, then it would be
obvious to prospective purchasers that the Santa Fe Speedway had
nothing to do with New Mexico. However, that is not the case
herein.
3 Because this is an Intent-to-Use application, we cannot be sure
exactly how consumer will see this mark in context. However, on its
face, there is nothing inherently incongruous about SANTA FE SPEEDWAY,
nor do we know of any reason why the potential consumer would view
this entire composite as a joke. Cf. In re Sharky's Drygoods Co., 23
USPQ2d 1061 (TTAB 1992) [“PARIS BEACH CLUB” would be viewed as a
humorous mark and hence not primarily geographical given the facetious
juxtaposition of “Paris” with “Beach Club.”].
Serial No. 75/803,266 & 75/803,693
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We turn next to the requirement that, for a refusal of
registration under Section 2(e)(3), there must be a goods/place
association. The Trademark Examining Attorney argues that the
public is likely to believe that applicant’s goods come from
Santa Fe, New Mexico. He has placed evidence into the record of
this application to demonstrate that calendars featuring people
and places of local interest are sold in Santa Fe, that there is
something out-of-towners recognize as a “Santa Fe–style bumper
sticker,” and that novelty license plate holders are among the
most common of souvenirs available in major tourist centers such
as Santa Fe, New Mexico.
Because of this, the Trademark Examining Attorney argues
that the city of Santa Fe will be associated with all of
applicant’s goods identified in these two applications.
The Trademark Examining Attorney is not required to
“marshal evidence that the place named is noted for or famous
for the goods recited in the application but, rather, … must
make a persuasive case that, on seeing the mark, purchasers
would be deceived into believing that the goods came from the
place named in the mark.” In re Handler Fenton Westerns, Inc.,
214 USPQ 848, 849 (TTAB 1982). We believe consumers will
perceive an association between applicant’s goods listed herein
and Santa Fe. It is sufficient for the Trademark Examining
Attorney’s refusal of registration if consumers would believe
Serial No. 75/803,266 & 75/803,693
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the goods are manufactured in the places named in applicant’s
marks. Having established that merchants in Santa Fe sell
calendars featuring people and places of local interest, that
cars sport bumper stickers having a “Santa Fe style,”4 and that
novelty license plate holders are popular in major tourist
centers such as Santa Fe, the Trademark Examining Attorney has
made out a prima facie case on this matter with evidence showing
that the goods in question emanated from, or were sold in, the
place named by the mark. No more can be expected from the
Office in the way of proof. In re Loew’s Theaters, Inc., supra
at 869.
Furthermore, the question is not only whether consumers
would perceive that applicant’s license plate holders, calendars
and bumper stickers are manufactured and/or sold in the place
4 Additionally, applicant argues that especially as applied to
these “Santa Fe-style” bumper stickers, its bumper stickers will
clearly not incorporate a uniquely Santa Fe motif or decorative style.
See In re International Taste Inc., 53 USPQ2d 1604 (TTAB 2000).
[Because “Hollywood” is also seen as a general reference to the
entertainment industry, it is not primarily geographical in the mark
“HOLLYWOOD FRIES with star design.”]. This is an Intent-to-Use
application, so we have no specimens (e.g., photographs of the license
plate holders, calendars and bumper stickers) showing us the exact
motifs applicant intends to use in an actual marketing context.
Arguably, to the extent the artwork of the license plate holders,
calendars and bumper stickers were to evoke regional motifs or
decorative styles associated with Santa Fe’s Native American and
Spanish heritage, it would merely reinforce the geographic
significance of the city of Santa Fe. On the other hand, to the
extent that the license plate holders, calendars and bumper stickers
were to show, for example, pictures of motorcyclists racing around a
dirt track, it would do nothing to reinforce this contention about the
term “Santa Fe” representing a regional “style.”
Serial No. 75/803,266 & 75/803,693
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named, but alternatively whether they would perceive some other
type of connection or relationship with the place named. See,
e.g., In re Olin Corp., 181 USPQ 182 (TTAB 1973) ["The
‘ornamentation’ of a T-shirt can be of a special nature which
inherently tells the purchasing public the source of the T-
shirt, not the source of manufacture but the secondary source
…”]. Hence, it is sufficient if the record shows that consumers
would believe the goods were manufactured as collateral products
for businesses located in Santa Fe.
The Trademark Examining Attorney has pointed out that Santa
Fe is a major metropolitan area. See Nantucket, supra, Nies J.,
concurring, 213 USPQ at 895-96 [CHICAGO for shirts would be
protectable only upon the establishment of acquired
distinctiveness]. The Trademark Examining Attorney has
established that Santa Fe is a known tourist destination and
that, to borrow a phrase, license plate holders, calendars and
bumper stickers and other such “souvenirs for the pilgrims of
popular culture” are widely available in these places. Rock and
Roll Hall of Fame and Museum Inc. v. Gentile Productions, 134
F.3d 749, 45 USPQ2d 1412, 1419 (6th Cir. 1998). Accordingly, as
a large American city that is also a tourist destination,
license plate holders, calendars and bumper stickers emblazoned
with “Santa Fe” alone, and “Santa Fe” followed immediately by
other local designations (e.g., “Santa Fe Horse Park,” “Santa Fe
Serial No. 75/803,266 & 75/803,693
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Children’s Museum,” or “Santa Fe Speedway”), would be
significant sales items for souvenir outlets in Santa Fe.
In sum, based on the record before us in this appeal, we
find that consumers encountering the mark SANTA FE SPEEDWAY on
license plate holders, calendars and bumper stickers would be
likely to believe mistakenly that such license plate holders,
calendars and bumper stickers have their origin in Santa Fe or
are otherwise connected with Santa Fe, New Mexico.
Decision: The refusal to register under Section 2(e)(3) of
the Trademark Act is affirmed.