Beaverton Foods, Inc.

Trademark Trial and Appeal Board

Nov 6, 2007

No. 76624790re (T.T.A.B. Nov. 6, 2007)

Mailed: November 6, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Beaverton Foods, Inc.
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Serial No. 76624790
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Request for Reconsideration
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Kevin M. Hayes of Klarquist Sparkman, LLP for Beaverton
Foods, Inc.

David Taylor, Trademark Examining Attorney, Law Office 112
(Angela Wilson, Managing Attorney).
_______

Before Hohein, Grendel and Kuhlke, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

On September 17, 2007 (with a certificate of mailing
dated September 13, 2007) applicant filed a timely request
for reconsideration of the decision issued on August 13,
2007, in which the Board affirmed the refusal to register
applicant’s mark NAPA VALLEY MUSTARD CO. (in standard
character form) under Section 2(a) of the Trademark Act, 15
U.S.C. §1052(a), on the ground that applicant’s mark is
geographically deceptive.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76624790
2
Applicant argues that the Board’s decision is
incorrect because 1) the “finding of materiality ... is
factually and legally incorrect” in that “[f]actually the
evidence of record in this case does not support a finding
of materiality” and “[l]egally, the Board’s inference of
materiality from its allegation that the Napa Valley is
known for mustard (which it is not) is improper”; and 2)
the Board did not “adhere to the pronouncement by Congress
... that nothing shall prevent the registration of a
qualifying primarily geographically deceptively
misdescriptive mark.” Request pp. 1-2.
We first address applicant’s second argument regarding
the application of Section 2(a) of the Trademark Act and
the inapplicability of Section 2(f) of the Trademark Act.
Applicant points to the Board’s decision that the exception
in Section 2(f) “clearly applies only to pre-NAFTA
‘primarily geographically deceptively misdescriptive’
marks, but not to pre-NAFTA ‘geographically deceptive
marks’” and argues that “the statute itself does not state
that the exception in 2(f) applies only to marks meeting
the pre-NAFTA definition of [primarily geographically
deceptively misdescriptive], but not the pre-NAFTA
definition of geographically deceptive.” Further applicant
argues that “the plain meaning of ‘nothing ... shall
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prevent’ can have no other meaning than – nothing,
including section 2(a), shall prevent the registration of a
qualifying [primarily geographically deceptively
misdescriptive] mark.” Request pp. 9-10.
Contrary to applicant’s position, the statute does in
fact state that “the exception in 2(f) applies only to
marks meeting the pre-NAFTA definition of [primarily
geographically deceptively misdescriptive].” Under the
statute, only those primarily geographically deceptively
misdescriptive marks “which became distinctive of the
applicant’s goods in commerce before the date of the
enactment of the North American Free Trade Agreement
[NAFTA]” are protected by the grandfather clause. 15
U.S.C. §1052(f). Geographically deceptive marks could not
become distinctive “before the date of the enactment of”
NAFTA, therefore, the exception clearly does not apply to
such marks.
In addition, applicant argues that “the inconsistency
in the statute caused by the Board’s Decision supports
Applicant’s reading of the statute [because] under the
Board’s decision, [a primarily geographically deceptively
misdescriptive mark] has a different meaning under Section
2(f) than under section 2(e)(3). According to applicant,
this is because “the Board is reading out the element of
Ser No. 76624790
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materiality from [primarily geographically deceptively
misdescriptive marks] under Section 2(f) by finding a
[primarily geographically deceptively misdescriptive mark]
registrable under section 2(f) only if the element of
materiality is lacking [but] the Board’s Decision does not
state that it also eliminates the element of materiality
from primarily geographically deceptively misdescriptive
marks under section 2(e)(3), which prevents the
registration of [primarily geographically deceptively
misdescriptive marks] that did not become distinctive prior
to NAFTA.” Applicant consequently maintains that “the
effect of the Board’s decision is to create two definitions
for the same phrase ... in the same section of the same
statute.” Request p. 10.
The element of materiality is not written in the
statute but rather is part of a test developed by case law.
In In re California Innovations, 329 F.3d 1334, 66 USPQ2d
1853 (Fed. Cir. 2003), the Court determined that the test
to be used under Section 2(e)(3) should include the element
of materiality. Our decision interpreting the grandfather
clause in section 2(f) does not create an inconsistency;
rather it adheres to the Court’s test for pre-NAFTA
primarily geographically deceptively misdescriptive marks,
the marks subject to the grandfather clause, which did not
Ser No. 76624790
5
include a materiality element. In re Loew’s Theatres,
Inc., 769 F.2d 764, 226 USPQ 865, 867 (Fed. Cir. 1985).
We turn next to applicant’s argument regarding the
findings of fact concerning the materiality element in the
mark. We first note that applicant did not argue the
merits of the refusal during examination or on appeal.
While, the Board decided not to view that as a concession
and considered the refusal on its merits, there is nothing
to rebut the prima facie case established by the examining
attorney.
Applicant argues that the evidence of record is
insufficient to support a prima facie case that Napa Valley
is known for mustard or that the origin of mustard in the
Napa Valley is material to the purchasing decision. Upon a
review of the evidence of record we find no error in the
Board’s conclusions.
First, we note that applicant did not dispute that
NAPA VALLEY is a geographic term and, by seeking
registration under Section 2(f), has conceded that the mark
as a whole is geographically misdescriptive. Thus, the
only element applicant may question at this point is the
element of materiality. Applicant particularly notes that
the excerpt from a website that states “The beautiful Napa
Valley produces some of the finest array of gourmet foods.
Ser No. 76624790
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We have selected our favorite Napa Valley Mustards for you
to enjoy,” www.oakvillegrocery.com, is merely routine
puffery and not sufficient to make out a prima facie case
for materiality. This excerpt does not stand alone but
rather must be viewed in the context of all of the evidence
of record. Viewing the record as a whole, we find no error
in our decision that the examining attorney’s conclusion
that the geographic term NAPA VALLEY is material to the
purchasing decision is supported by the evidence of record
and has not been rebutted by applicant.
Further, applicant argues that the Board has made an
improper inference of materiality by “merely inferr[ing]
materiality in this case based on its allegation that the
Napa Valley is known for mustard.” The Board did not infer
materiality, but rather made a finding that the origin of
the Napa Valley is material to the purchasing decision for
applicant’s goods, namely, mustard. See Decision p. 15
“...we find that NAPA VALLEY is a well known geographic
location and that it is also sufficiently known for mustard
and other gourmet items for such location to be a material
factor in the purchasing decision.” See In re Save Venice
New York Inc., 259 F.3d 1346, 59 USPQ2d 1778 (Fed. Cir.
2001) (THE VENICE COLLECTION and design held primarily
geographically deceptively misdescriptive for the goods
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identical to Venetian products and to those related to such
products based on atlas and gazetteer excerpts showing that
Venice was a well known center for the manufacture of
glass, lace, etc.).1
The purpose of reconsideration is to point out errors
made by the Board in reaching its decision. The basis for
the finding that the involved mark is geographically
deceptive is clearly articulated therein and we do not find
any error in reaching that finding. In view thereof,
applicant’s request for reconsideration of the Board’s
decision is denied, and the decision of August 13, 2007
stands.

* * *

1 In California Innovations, the Court noted that “[a]lthough the
court in Save Venice did not expressly address the materiality
issue, because it was not officially recognized in this context,
the court emphasized that ‘all of the applicant’s goods are
associated with traditional Venetian products’,” and thus “the
record in Save Venice satisfies the test for deception.”
California Innovations, supra at 1857.