Boise Cascade Corp.

Trademark Trial and Appeal Board

Dec 2, 2003

No. 76363146 (T.T.A.B. Dec. 2, 2003)

Mailed: December 2, 2003
Paper No. 10
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Boise Cascade Corporation
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Serial No. 76363146
_______
Kevin M. Hayes of Klarquist Sparkman, LLP for Boise Cascade
Corporation.
Alex S. Keam, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______
Before Simms, Chapman and Bucher, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
On January 24, 2002, Boise Cascade Corporation (a
Delaware corporation, with a corporate address in Boise,
Idaho) filed an application to register on the Principal
Register the mark BOISE ALLBEAM for “laminated wood
members” in International Class 19. The application is
based on applicant’s assertion of a bona fide intention to
use the mark in commerce.
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76363146
2
Registration has been finally refused under Section 6
of the Trademark Act on the basis of applicant’s failure to
comply with a requirement to disclaim the word “Boise.”
Such word, according to the Examining Attorney, is
primarily geographically descriptive of applicant’s goods
within the meaning of Section 2(e)(2) of the Trademark Act,
15 U.S.C. §1052(e)(2), and therefore must be disclaimed.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested.
It is the Examining Attorney’s position that the
primary significance of the term “Boise” is that of a
geographic place, specifically, a city in Idaho, as
evidenced by the following definition in The American
Heritage Dictionary (Third edition 1992): “The capital and
largest city of Idaho, in the southwest part of the state
on the Boise River, about 257 km (160 mi) long. The city
was founded in 1863 after gold was discovered in the river
valley. Population, 102,160.”
In addition to this definition, the Board takes
judicial notice of the following definitions of “Boise”
(emphasis added):1
1 See The University of Notre Dame du Lac v. J.C. Gourmet Food
Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d
Ser. No. 76363146
3
(1) “city (1990 pop. 125,738) (Capital
of Idaho) … The largest city in
Idaho, with one of the fastest
growing metropolitan areas in the
U.S., Boise is a RR junction and
an important trade and
transportation center. Mfg. (food
processing, paper and wood prods.,
computer hardware and software,
specialty semiconductors and
electronics.) … .” The Columbia
Gazetteer of North America (2000);
and
(2) “also, Boise City, pop. 125,738)
state capital and seat of Ada Co.,
SW Idaho, on the Boise R.
Situated on the Oregon Trail, it
was founded in 1863 after the
Boise Basin gold rush, when the
U.S. Army built Fort Boise. The
settlement was at first a service
center for nearby mines. Later
the economy expanded to include
agriculture and lumbering. …
Surrounded by a large metropolitan
area, Boise is by far the most
populous city in Idaho, with a
population growth of 25% between
1980 and 1990. … The city is also
a trade center for a large area of
farms … . Other industries
include lumber milling, food
products, and the manufacture of
electronic equipment, mobile
homes, wood and steel products,
and farm machinery. … .” The
Cambridge Gazetteer of the United
States and Canada (1995).
The Examining Attorney contends that “Boise” names a
geographical place that is not remote or obscure; and that
1372, 217 USPQ 505 (Fed. Cir. 1983). See also, TBMP §704.12(a)
(2d ed. June 2003).
Ser. No. 76363146
4
because applicant’s goods come from the geographical place
named in the mark, a public association of the goods with
the place is presumed.
Applicant argues, inter alia, that the Examining
Attorney has not made a prima facie case that BOISE ALLBEAM
is primarily geographically descriptive in relation to the
goods;2 that the Examining Attorney is required to establish
a goods/place association; that even if the Examining
Attorney had established a prima facie case, applicant’s
evidence establishes that the primary significance of BOISE
for laminated wood members to consumers is not geographic,
but rather, it is applicant as the source of the goods;
that applicant has applications for marks on the Principal
Register and registrations of marks on the Principal
Register which do not include a disclaimer of “Boise” or a
Section 2(f) claim of acquired distinctiveness; and that
doubt regarding whether a term is primarily geographically
descriptive is resolved in applicant’s favor.
Both the Examining Attorney and applicant put into the
record photocopies of some of applicant’s related
applications and registrations. Applicant emphasizes the
2 The Examining Attorney required a disclaimer of the term
“Boise.” She did not refuse registration of the entire mark
BOISE ALLBEAM on the basis that it is primarily geographically
descriptive.
Ser. No. 76363146
5
few wherein the term “Boise” has not been disclaimed, or is
not under Section 2(f) on the Principal Register. The
Examining Attorney emphasizes those wherein the term
“Boise” is disclaimed, or is under Section 2(f) on the
Principal Register, or is registered on the Supplemental
Register.
Applicant submitted with its brief on appeal numerous
exhibits (A-P), and the declaration of Susan Walton,
applicant’s director of corporate communications. Only
some of the exhibits were previously of record. With
regard to the remainder of the exhibits, as well as the
declaration of Susan Walton, normally material submitted
for the first time with applicant’s brief would be excluded
as untimely submitted. See Trademark Rule 2.142(d), and
TBMP §1207.01 (2d ed. June 2003). However, in this case,
the Examining Attorney did not object thereto, and, in
fact, she discussed the evidence, treating it as if it was
of record. See TBMP §1207.03 (2d ed. June 2003).
Accordingly, the Board considers applicant’s evidence
stipulated into the record.
In order for a mark, or a portion thereof, to be
considered primarily geographically descriptive under
Section 2(e)(2) of the Trademark Act, it is necessary to
show (i) that the mark or relevant portion is the name of a
Ser. No. 76363146
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place known generally to the public, and (ii) that the
public would make a goods (or services)/place association,
that is, believe that the goods (or services) for which the
mark is sought to be registered originate or will originate
in the named place. See In re Jacques Bernier Inc., 894
F.2d 389, 13 USPQ2d 1725 (Fed. Cir. 1990); In re Societe
General des Eaux Minerals de Vittel S.A., 824 F.2d 957, 3
USPQ2d 1450 (Fed. Cir. 1987); In re JT Tobacconists, 59
USPQ2d 1080 (TTAB 2001); and In re California Pizza
Kitchen, Inc., 10 USPQ2d 1704 (TTAB 1988). Moreover, where
there is no genuine issue that the geographical
significance of a term is its primary significance, and
where the geographical place named is neither obscure nor
remote, a public association of the goods and/or services
with the place may ordinarily be presumed from the fact
that the applicant’s goods and/or services come from or
will come from the geographical place named in the mark.
See, e.g., In re Carolina Apparel, 48 USPQ2d 1542 (TTAB
1998); In re California Pizza Kitchen, Inc., supra; and In
re Handler Fenton Westerns, Inc., 214 USPQ 848 (TTAB 1982).
The dictionary definitions establish a prima facie
case that the primary significance of the term “Boise” is
geographic. Being a specifically defined, relatively large
city in the United States and a state capital, it is
Ser. No. 76363146
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neither remote nor obscure in the context of consumer
awareness. Considering the first part of the test, we find
the evidence clearly establishes that “Boise” is the name
of a place known generally to the public.
This leads to a consideration of the second part of
the test, and here the goods/place association is presumed
because applicant is a corporation located in Boise, Idaho,
and applicant acknowledges that its “goods originate from
many different places including Boise, Idaho.” The fact
that applicant may manufacture goods at locations other
than Boise, Idaho does not mean that the public would not
associate applicant’s “laminated wood members” with Boise,
Idaho. See In re Chalk’s International Airlines Inc., 21
USPQ2d 1637 (TTAB 1991).
Even if the goods/place association were not presumed,
it is established on this record by the gazetteer entries
showing that Boise, Idaho is known for lumber milling and
wood products. Moreover, applicant’s own evidence (Exhibit
B) shows that it was founded in 1957 by the merger of two
Northwestern lumber companies, Boise Payette Lumber Company
of Boise, Idaho and Cascade Lumber Company of Yakima,
Washington into Boise Cascade Corporation; and that
applicant is now and always has been headquartered in
Boise, Idaho. Thus, the record establishes that it is
Ser. No. 76363146
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reasonable for consumers to assume that the involved goods
will come from Boise, Idaho.
In sum, the term “Boise” is a geographic term which is
neither obscure nor remote; the goods come from the place
named; and the place is known for the goods involved
herein. Cf. Trans Continental Records Inc., 62 USPQ2d 1541
(TTAB 2002). Because both parts of the enunciated test
have been met, we find that the term “Boise” is primarily
geographically descriptive. See In re Compagnie Generale
Maritime, 993 F.2d 841, 26 USPQ2d 1652 (Fed. Cir. 1993.)
As noted above, the Examining Attorney points out that
there are several applications/registrations owned by
applicant in which it has disclaimed the term BOISE or has
registered marks including the term under Section 2(f) or
on the Supplemental Register, while applicant contends that
it has “registrations and allowed applications on the
Principal Register that do not disclaim the term BOISE and
that were not registered on the Supplemental Register.”
(Emphasis in original, brief, p. 13). While the USPTO
strives for consistency, the Board must decide each case on
its own facts and record. See In re Consolidated Foods
Corp., 200 USPQ 477 (TTAB 1978). With respect to
applicant’s applications and/or Principal Register
registrations which do not include disclaimers of the term
Ser. No. 76363146
9
“Boise” or a claim of acquired distinctiveness under
Section 2(f), we do not have before us any information from
the involved files as to why an Examining Attorney did not
require such, or dropped any such requirement, and we can
only speculate thereon. See In re Nett Designs Inc., 236
F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001). Thus, these
applications/registrations are of little probative value.
However, applicant’s previous registrations (and
applications) on the Supplemental Register, or under
Section 2(f) on the Principal Register, or including a
disclaimer of “Boise” are more probative as they evidence
applicant’s acknowledgment that the term “Boise” is
primarily geographically descriptive of the goods and/or
services involved therein. (See e.g., application Serial
No. 76358793 for the mark BOISE for, inter alia, “wood pulp
for manufacturing purposes, paper pulp for manufacturing
purposes” and “wood and wood products” was recently
approved for publication under Section 2(f) of the
Trademark Act by the Examining Attorney; application Serial
No. 76362590 for the mark BOISE GLULAM (“glulam”
disclaimed) for “laminated wood beams” was recently
published for opposition under Section 2(f) of the
Trademark Act; Registration No. 2677231 for the mark BOISE
CLASSIC for “high grade lumber” issued January 21, 2003
Ser. No. 76363146
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pursuant to Section 2(f) of the Trademark Act as to
“Boise”; Registration No. 2575790 for the mark BOISE GOLD
for “high-grade lumber” issued June 4, 2002 with a
disclaimer of the term “Boise”; Registration No. 2279010
for the mark BOISE for distributorship and other services
in the fields of, inter alia, office and computer supplies
issued September 21, 1999 pursuant to Section 2(f) of the
Trademark Act; Registration No. 2542099 for the mark BOISE
EXPRESS for distributorship and other services in the
fields of office supplies and office furniture issued
February 26, 2002 pursuant to Section 2(f) of the Trademark
Act; and Registration No. 2407393 for the mark BOISE
MARKETING SERVICES (“marketing services” disclaimed) for
distributorship and other services in the field of
promotional merchandise and promoting the business of
others issued August 7, 2000 on the Supplemental Register.)
Finally, we are aware that applicant contends the mark
is not “primarily” geographical because its primary
significance to the consuming public is to identify
applicant as the source of the goods. Applicant submitted
evidence relating thereto, including information such as
sales figures, the costs involved in recently changing
applicant’s trade name (not its legal name), and several
press releases issued by applicant. However, the record is
Ser. No. 76363146
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clear that applicant has not sought to invoke the benefits
of Section 2(f) of the Trademark Act regarding a claim of
acquired distinctiveness of the word “Boise” for the goods
in this application. While this evidence would have been
relevant to the issue of acquired distinctiveness, that
issue is not involved herein. See In re Cazes, 21 USPQ2d
1796 (TTAB 1991); and In re McDonald’s Corp., 230 USPQ 304
(TTAB 1986) (both cases involve the necessity of claims of
acquired distinctiveness and surname refusals).
Decision: The requirement under Section 6 for a
disclaimer of the term “Boise” is proper, and the Examining
Attorney’s refusal to register the mark in the absence of a
disclaimer of “Boise” is affirmed.
If a disclaimer is entered within thirty days from the
mailing date hereof, this decision will be set aside and
the application file will then be forwarded for publication
of the mark for opposition. See Trademark Rule 2.142(g).