A. Croteau Lte'e

Trademark Trial and Appeal Board

Sep 26, 2000

No. 75410279 (T.T.A.B. Sep. 26, 2000)

Paper No. 9
RFC
9/26/00
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________
In re A. Croteau Lte′e
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Serial No. 75/410,279
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Jess M. Collen of Collen Law Associates for A.
Croteau Lte′e.
Sue Carruthers, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
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Before Simms, Cissel and Quinn, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On December 23, 1997, applicant, a Canadian
corporation, applied to register the mark “AUSTRALIAN
KINGDOM” on the Principal Register for what were
subsequently identified by amendment as “clothing for men,
women and children, namely hats, bonnets, shawls, scarves,
face protector toques, t-shirts, sweatshirts, blouses,
shirts, short-sleeved t-shirts, overalls, jumpsuits,
aprons, vests, jackets, nightshirts, neckties, wind
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/410,279
2
resistant jackets, raincoats, gloves, mittens, toques,
track suits, jogging suits, one(1)-, two(2) and three(3)-
piece dresses, sweaters, tank tops, long pants, short
pants, Bermuda shorts, boxing shorts, slips, skirts,
divided skirts, socks, stockings, pantyhose, tunics,
pullovers, cardigans, jerseys, belts, suspenders, jeans,
pyjamas, evening gowns, bathrobes, sleepwear, bras,
undergarments, body suits, camisoles, boleros, swimsuits,
[and] espadrilles,” in Class 25. The application was based
on applicant’s assertion that it possessed a bona fide
intention to use the mark in commerce in connection with
these goods.
The Examining Attorney refused registration under
Section 2(e)(3) of the Lanham Act, 15 U.S.C. Section
1052(e)(3), on the ground that the mark applicant seeks to
register is primarily geographically deceptively
misdescriptive in connection with the clothing items which
applicant specifies in the application.
When the refusal was made final, applicant timely
filed a notice of appeal. Both applicant and the Examining
Attorney filed briefs. Attached to the Examining
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Attorney’s brief were copies of dictionary definitions1 of
“Australia” and “Australian” which establish that Australia
is a country and a continent and that textiles are produced
there. Applicant did not request an oral hearing before
the Board.
Based on careful consideration of the written record
and arguments before us, we hold that the refusal to
register is well taken because the mark sought to be
registered is primarily geographically deceptively
misdescriptive of the goods specified in the application.
Applicant does not dispute the accuracy of the
Examining Attorney’s recitation of the test for
registrability under Section 2(e)(3) of the Lanham Act. A
mark is unregistrable under this section if its primary
significance is geographic; if purchasers would be likely
to assume that the goods come from that place, i.e., that
purchasers would make a goods/place association; and if the
goods do not, in fact, come from the place that the mark
names. In re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889
(CCPA 1982).

1 While this evidence would otherwise be considered untimely, the
Board may take judicial notice of dictionary definitions at any
juncture.
Ser No. 75/410,279
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In the instant case, each of the three elements of
this test have been met. The Examining Attorney has made a
prima facie showing that the mark applicant intends to use
is primarily geographically deceptively misdescriptive
because she has shown that the primary significance of the
mark is geographic and that purchasers of the goods
specified in the application would make an association
between the place named in the mark and the goods. Also,
applicant concedes that its products will come from Canada,
and not from Australia.
Applicant argues that the mark it seeks to register is
a unitary mark which, when it is considered in its
entirety, has significance that is not primarily
geographic. Applicant further argues that even if the
primary significance of the mark had been established to be
geographic, the Examining Attorney has failed to
demonstrate that a goods/place association would be made by
purchasers of the clothing items listed in the application.
Neither of these arguments is persuasive.
TMEP Section 1213.06(a) defines a unitary mark as a
mark wherein the elements of the mark are so merged
together that they cannot be divided into separable
elements. In the case at hand, applicant contends that the
word "Australia" connotes "a far away place, the land down
Ser No. 75/410,279
5
under, an exotic location," while the word "kingdom"
implies royalty, the state government, or a realm or
province and nature." As the Examining Attorney points
out, by reciting these meanings of the component words in
the mark it seeks to register, applicant has itself
provided support for the conclusion that the primary
significance of "AUSTRALIAN KINGDOM" is geographic.
Australia is indeed the place applicant concedes that it
is. By adding the word "KINGDOM," applicant has merely
reinforced the notion of a country or political unit. The
overall connotation of the term sought to the registered is
primarily geographic, a reference to the country of
Australia.
Moreover, even if the combined term were unitary, it
would still be unregistrable under the Lanham Act. Just as
"AMERICAN BEAUTY" was found to be primarily geographically
deceptively misdescriptive in connection with sewing
machines made in Japan in Singer Manufacturing Co. v.
Birginal-Bigsley Corp., 138 USPQ 63 (CCPA 1963), and "NEW
YORK WAYS GALLERY" was held to be primarily geographically
deceptively misdescriptive of various types of bags not
made in New York in In re Wada, 194 F.2d 1297, 52 USPQ2d
1539, (Fed. Cir. 1999), aff'g 48 USPQ2d 1689 (TTAB 1998).
Ser No. 75/410,279
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the primary significance OF "AUSTRALIAN KINGDOM" is
geographic.
With regard to applicant's argument that the Examining
Attorney has not established that a goods/place association
would be made by purchasers of the clothing items listed in
the application, we note that she was not obligated to
introduce evidence that Australia is noted for any of the
clothing items listed in the application in order to
establish that association would be made between Australia
and such clothing products. In re Nantucket, Inc., supra.
As pointed out in the concurring opinion in that case, a
goods/place association can be established when the place
named in the mark is not necessarily known for or noted for
the particular products specified in an application for
trademark registration. As Judge Nies stated in that case,
a prima facie goods/place association could be made between
"Chicago" and almost any product, "…and an applicant would
have a difficult task to overcome it." We agree with the
Examining Attorney that if a goods/place association can be
assumed in connection with the name of a large American
city irrespective of the nature of the goods involved, then
we may find that a goods/place association would be made
when the mark is the name of an entire country and the
Ser No. 75/410,279
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goods in question are clothing items which are produced
worldwide.
In summary, the primary significance of the mark
sought to the registered is geographic; a goods/place
association would be made between the goods specified in
the application and place named in the mark; and the goods
will, in fact, not originate in the place named in the
mark. Accordingly, the refusal to register under Section
2(e)(3) of the Lanham Act must be affirmed.
R. L. Simms
R. F. Cissel
T. J. Quinn
Administrative Trademark Judges
Trademark Trial & Appeal Board
Ser No. 75/410,279
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