Cafe Management, LLC

Trademark Trial and Appeal Board

Jan 24, 2002

No. 75429062 (T.T.A.B. Jan. 24, 2002)

1/24/02 Paper No. 12
BAC

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Cafe Management, LLC1
________

Serial No. 75/429,062
_______

James R. Eley of Kegler, Brown, Hill & Ritter, LPA for Cafe
Management, LLC.

Yong Oh (Richard) Kim, Trademark Examining Attorney, Law
Office 115 (Tomas Vlcek, Managing Attorney).
_______

Before Simms, Cissel and Chapman, Administrative Trademark
Judges.

Opinion by Chapman, Administrative Trademark Judge:
On February 5, 1998, Cafe Management, LLC (an Ohio
limited liability company) filed an application to register
on the Principal Register the service mark CLEVELAND SPORTS
HALL OF FAME CAFE2 for “restaurants.” The application is

1 Applicant’s name is set forth as both “Cafe Managment, LLC” and
as “Cafe Management, LLC” in different parts of the original
application. Inasmuch as the papers filed throughout the
prosecution of the application refer to applicant as Cafe
Management, LLC, the Board will utilize that spelling of
applicant’s name.
2 The mark shown on the drawing page of applicant’s application
is CLEVELAND SPORTS HALL OF FAME CAFE. Throughout most of the
papers filed after the application, applicant erroneously refers
to its mark as “CLEVELAND SPORTS HALL OF FAME CAFÉ.”
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/429062
2
based on applicant’s assertion of a bona fide intention to
use the mark in commerce. Applicant disclaimed the word
“cafe.” Although not offered as a formal amendment to the
application as a claim of acquired distinctiveness under
Section 2(f) of the Trademark Act, applicant contends that
the words “hall of fame cafe” have acquired secondary
meaning and are uniquely associated with applicant.
The Examining Attorney initially refused registration
on the ground that the mark is merely descriptive of the
identified services under Section 2(e)(1) of the Trademark
Act, 15 U.S.C. §1052(e)(1), specifically contending that
the words “cafe” and “hall of fame” are merely descriptive;
that when CLEVELAND SPORTS is added thereto “the combined
term signifies a memorial to sports teams and figures with
a connection to Cleveland”; and that “from the plain
meaning of the words, applicant’s mark merely describes a
restaurant with a theme and emphasis on Cleveland sports
teams and figures.” (First Office action, p. 2.)
Subsequently, in his second office action, the Examining
Attorney continued the merely descriptive refusal, and
alternatively refused registration on the ground that the
Ser. No. 75/429062
3
mark is primarily geographically descriptive under Section
2(e)(2) of the Trademark Act, 15 U.S.C. §1052(e)(2).3
The Examining Attorney made both refusals final, and
applicant appealed to this Board. Both applicant and the
Examining Attorney have filed briefs.4 Applicant did not
request an oral hearing.
We consider first the refusal to register the mark
CLEVELAND SPORTS HALL OF FAME CAFE as primarily
geographically descriptive under Section 2(e)(2). In order
for registration of a mark to be properly refused on the
ground that it is primarily geographically descriptive of
the applicant’s goods or services, it is necessary to show

3 Applicant contends that the Board should “overrule” the
Examiner’s final refusal on geographical descriptiveness because
the Examining Attorney did not raise this issue until the second
Office action, and did not comply with TMEP §1105.03(a) which
indicates that the Examining Attorney “should point out why the
refusal or requirement was not made earlier....” First, this
section of the TMEP also specifically states that even if it was
possible to raise an issue on the first Office action, the
Examining Attorney “may take appropriate action in a subsequent”
Office action. Second, the Manual (TMEP) only suggests that the
Examining Attorney “should” set forth a reason. Third, and in
any event, the Board is not bound by the TMEP.
4 In applicant’s brief on appeal at page 8, applicant referred to
a “Response to Final Office Action” and two items presumably
attached thereto--(i) photocopies of 11 registrations and
applications of marks including the words “hall” and “fame” and
“café”; and (ii) a search of YellowPages.com showing three
listings for cafes with “hall of fame” incorporated into their
name—all three listings allegedly being for applicant’s
restaurants. There is no “Response to Final Office Action” in
this record. We note that even if said “Response” with
attachments were properly of record herein it would not be
persuasive of a different result.
Ser. No. 75/429062
4
that the mark sought to be registered is the name of a
place generally known to the public, and that the public
would make a goods/place or services/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 Societe Generale 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).
See also, In re Loew’s Theatres, Inc., 769 F.2d 764, 226
USPQ 865 (Fed. Cir. 1985). Moreover, if a geographical
term in a mark is neither remote nor obscure, and
geographical significance of the term is the primary
connotation of the term, and where the goods or services
come from the place named in the mark, a public association
of the goods or services with the place may ordinarily be
presumed. See In re Carolina Apparel, 48 USPQ2d 1542 (TTAB
1998); and In re Handler Fenton Westerns, Inc., 214 USPQ
848 (TTAB 1982).
The addition of descriptive words and/or generic words
to a geographical term does not avoid the refusal of
primary geographical descriptiveness. See In re U.S. Cargo
Inc., 49 USPQ2d 1702 (TTAB 1998); In re Cambridge Digital
Ser. No. 75/429062
5
Systems, 1 USPQ2d 1659 (TTAB 1986); and In re BankAmerica
Corp., 231 USPQ 873 (TTAB 1986).
The record includes The American Heritage Dictionary
of the English Language (3rd edition 1992) definition of
“Cleveland” as “1. A city of northeast Ohio on Lake Erie.
....” In addition, on page 5 of applicant’s reply brief,
applicant “concedes that the CLEVELAND portion of the mark
in question is not given much weight as it is
geographically descriptive.” There is simply no doubt that
the geographical significance of the term “CLEVELAND” is
its primary significance, and it is neither remote nor
obscure in the context of consumer awareness.
The addition of the generic term “cafe” and the highly
descriptive terms “sports hall of fame” to the geographic
term do not negate the geographic nature of applicant’s
mark. The Examining Attorney also submitted The American
Heritage Dictionary of the English Language (Third edition
1992) definitions of the following words:
“café” (noun) is defined as “A
coffeehouse, restaurant, or bar”;
and

“hall of fame” (noun) is defined
as “1. A group of persons judged
outstanding, as in sport or
profession. 2. A building housing
memorial items honoring
illustrious persons.”

Ser. No. 75/429062
6
In addition, the Board takes judicial notice (see TBMP
§712.01) of the definition of “sports” (adjective) from The
American Heritage Dictionary of the English Language
(Fourth edition 2000) in which it is defined as “1. Of,
relating to, or appropriate for sports....”
The record establishes a prima facie case that the
words “sports hall of fame cafe” are descriptive and do not
detract from the primary geographical significance of the
mark as a whole. See In re Gold’s Gym Enterprises Inc., 3
USPQ2d 1716 (TTAB 1987) (BODYBUILDING HALL OF FAME held
merely descriptive of the service of maintaining and
conducting an exhibition displaying outstanding
participants and events in the field of bodybuilding).
Consumers (the general public) would readily perceive that
applicant’s restaurant is located in Cleveland. Further,
consumers would think that the restaurant features sports
teams and hall of fame figures.
Applicant has focused heavily on its claim of
secondary meaning (acquired distinctiveness) as to at least
a portion of a previously registered mark, BUCKEYE HALL OF
FAME CAFÉ.5

5 Registration No. 2,211,718, issued on December 15, 1998 to The
Ohio State University for “restaurants.” The term “café” is
disclaimed. The claimed date of first use is September 1997.
Ser. No. 75/429062
7
It is permissible under Section 2(f) of the Trademark
Act to claim acquired distinctiveness of a mark or a
portion of a mark which is the subject of an intent-to-use
application. The burden of establishing the claim of
acquired distinctiveness lies with the applicant. See In
re Rogers, 53 USPQ2d 1741, 1743-1744 (TTAB 1999). See also,
TMEP §1212.09. However, in this case, applicant’s argument
that “the base portion of this mark [‘hall of fame cafe’]
has acquired a secondary meaning, and thus is not primarily
geographically descriptive” (Applicant’s December 7, 1999
response, p. 4) is not persuasive.
The Examining Attorney was not persuaded by
applicant’s claim of secondary meaning, explaining in his
brief (p. 5) as follows: “reliance on such registration
[Registration No. 2,211,718] is improper since the prior
registration is not owned by the applicant nor is the prior
mark the same as the one in the present application.”
Applicant contends that as the exclusive licensee6 of
The Ohio State University (record owner of Registration No.
2,211,718), applicant is the “constructive owner” of the
registered mark BUCKEYE HALL OF FAME CAFÉ. Applicant
supports this argument by citation to the case of Ste.

6 Applicant submitted a copy of the Trademark License Agreement
into this record on December 7, 1999.
Ser. No. 75/429062
8
Pierre Smirnoff, Fls., Inc. v. Hirsch et al, dba L. Hirsch
& Sons, 109 F. Supp. 10, 96 USPQ 168 (SDCA 1952) wherein
the District Court said that “...the grant of an exclusive
and irrevocable right to use a mark in a designated
territory is an assignment and not a mere license.”
The facts in the Ste. Pierre Smirnoff case are readily
distinguishable from the matter before this Board. The
1952 District Court case (a trademark infringement and
unfair competition lawsuit) involved defendants arguing
that the plaintiff was without a protective right in the
mark SMIRNOFF for vodka because it was a mere licensee
while the original “Smirnoff” concern still operated
abroad. The Court stated at 96 USPQ at 170 that “the
evidence shows that plaintiff is the owner by virtue of a
purchase for a lump sum of the entire exclusive and
irrevocable right in the business, good-will of the
business, and the name “Smirnoff’ within the United
States.” In the case now before this Board, there is no
foreign entity which sold rights in the United States,
including the business, the goodwill, and the trademark
itself. (If a foreign entity did sell rights in a mark to
a U.S. company, then that assignee could seek registration
of the mark in the United States.)
Ser. No. 75/429062
9
Quite the opposite, here we have evidence that the
owner of the registration granted applicant only a license.
Specifically, according to the June 17, 1997 “Trademark
License Agreement” between applicant et al and The Ohio
State University, applicant was granted an exclusive
license to use, inter alia, the mark “Buckeye Hall of Fame
Café”; but the contract is clear that the “The Trademarks”
(defined on pages 1 and 2 of the contract7) are owned by
OSU. Moreover, with regard to “Use of The Trademarks,”
paragraph 10 reads, in relevant part, as follows:
10. ...Use of the Trademarks,
including the term Buckeye Hall of
Fame Café (or any similar terms)
by CAFÉ [applicant] pursuant to
this Agreement shall inure solely
to the benefit of OSU, and CAFÉ
shall obtain no rights in The
Trademarks because of CAFÉ’S use
thereof in accordance with this
Agreement.
...CAFÉ agrees to assign any and
all trademark or service mark
applications (Federal or state)
that it may have already filed for
any of The Trademarks referred to
herein.
...In the event that Café desires
to register any additional
trademarks or service marks which
include The Trademarks, it shall
so advise OSU. OSU agrees to
cooperate with CAFÉ in registering

7 Paragraph 1. A. reads as follows: “The trademarks shall mean
the marks identified above, along with any additional trademarks,
trade dress or service marks that refer to, relate to or in any
way suggest an affiliation or connection with or endorsement by
OSU, including the term ‘Buckeye Hall of Fame Café’.”
Ser. No. 75/429062
10
such marks as CAFÉ chooses, in
OSU’s name and at CAFÉ’S sole
expense.

Thus, the contract is clear that applicant did not
acquire ownership rights in the trademark BUCKEYE HALL OF
FAME CAFÉ, and the use of the mark inures to OSU’s benefit,
not applicant’s.8 Applicant simply operates the restaurant
by that name in Columbus, Ohio pursuant to this license
from OSU.9
Moreover, the Ste. Pierre Smirnoff case relied on by
applicant has been distinguished by at least one appellate
court, DEP Corporation v. Interstate Cigar Company, Inc. et
al., 622 F.2d 621, 206 USPQ 673, footnote 2 (2nd Cir.
1980). The Second Circuit noted that the license agreement

8 In its reply brief (p. 5) applicant acknowledges that “while
Applicant receives no rights in that mark [BUCKEYE HALL OF FAME
CAFÉ], the mark itself acquires secondary meaning from its use.
In turn, legally equivalent marks such as the one in question
also achieve secondary meaning and acquire distinctiveness from
Applicant’s use.” This argument by applicant is doubly flawed.
First, according to the contract between OSU and applicant, the
use of the mark BUCKEYE HALL OF FAME CAFÉ inures to OSU’s
benefit, not applicant’s. Second, we cannot agree that the marks
BUCKEYE HALL OF FAME CAFÉ and CLEVELAND SPORTS HALL OF FAME CAFE
are legal equivalents. These two marks create different
commercial impressions and differ materially from one another.
See Van Dyne-Crotty Inc. v. Wear-Guard Corp., 926 F.2d 1156, 17
USPQ2d 1866 (Fed. Cir. 1991); and Ilco Corp. v. Ideal Security
Hardware Corp., 527 F.2d 1221, 188 USPQ 485 (CCPA 1976).
9 Applicant’s evidence regarding the number of patrons at the
BUCKEYE HALL OF FAME CAFÉ in Columbus, Ohio; the sales and
advertising figures; and publicity about the Columbus, Ohio cafe
are irrelevant because applicant does not own the rights thereto,
and because BUCKEYE HALL OF FAME CAFÉ is a different mark from
the mark applicant seeks to register.
Ser. No. 75/429062
11
involved before it did not constitute an assignment of any
rights in the trademarks; and commented that in the Ste.
Pierre Smirnoff case, the plaintiff therein was the owner
of the entire exclusive and irrevocable right in the
business, the good-will of the business, and the involved
trademark.
Even if applicant in fact owned the registration for
“Buckeye Hall of Fame Café,” and had established that the
words “Buckeye Hall of Fame Café” or “Hall of Fame Café”
had acquired distinctiveness showing applicant as the
recognized source of the involved services, that would not
mean that the mark CLEVELAND SPORTS HALL OF FAME CAFE is
not primarily geographically descriptive. These marks are
not legal equivalents.
The term “sports” likewise fails to remove the mark
from being primarily geographically descriptive. While
this is an intent-to-use application, we must assume that
the proposed restaurant in Cleveland will involve a sports
theme. The record is clear that applicant markets the
BUCKEYE HALL OF FAME CAFÉ (which it operates in Columbus,
Ohio as the licensee of OSU) “extensively through tie-ins
and promotions with The Ohio State University, area sports
teams, local sports legends, ...” Also, applicant
submitted a photocopy of a September 16, 1998 article from
Ser. No. 75/429062
12
“The Knoxville News-Sentinel” in which a person who was
working to open a restaurant in Knoxville, Tennessee
explained that he patterned his planned restaurant after
the “sports-oriented concept” of applicant’s restaurant in
Columbus, Ohio.
The purchasing public, upon seeing the mark CLEVELAND
SPORTS HALL OF FAME CAFE, will immediately think of a
restaurant located in Cleveland, Ohio, and particularly
featuring a sports theme and housing sports memorabilia
relating to Cleveland, Ohio sports teams and illustrious
individuals, or possibly relating to sports teams and hall
of fame individuals in general. There is nothing
particularly unique or incongruous regarding the
juxtaposition of all these words. The reasonable shopper
in this context is the general public. See 2 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition,
§11:21 (4th ed. 2001).
We find that the primary significance of the mark
CLEVELAND SPORTS HALL OF FAME CAFE remains geographical.
See In re Wada, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir.
1999); In re Compagnie Generale Maritime, 993 F.2d 841, 26
USPQ2d 1652 (Fed. Cir. 1993); In re U.S. Cargo Inc., supra;
In re Chalk’s International Airlines Inc., 21 USPQ2d 1637
(TTAB 1992); In re California Pizza Kitchen, supra; and In
Ser. No. 75/429062
13
re Opryland USA Inc., 1 USPQ2d 1409 (TTAB 1986). See also,
In re Texsun Tire and Battery Stores, Inc., 229 USPQ 227
(TTAB 1986).
The second prong of the test under section 2(e)(2) is
whether there is a services/place relationship. Applicant
does not dispute that, if it commences use of this mark for
these services, the restaurant services would come from and
be located in Cleveland, Ohio. Further, the Examining
Attorney submitted several stories retrieved from the Nexis
database, and an excerpt from one of those stories appears
below:
...Jon M. Self, president of the
Buckeye Hall of Fame Café in
Columbus, is interested in
bringing a local version of his
restaurant/entertainment club to
downtown Cleveland....Self said
he’d like to build, but finding
that much space with enough
parking isn’t easy. If
successful, the local operation
would be the Cleveland Sports Hall
of Fame Cafe. “Cleveland Plain
Dealer,” May 3, 1998.

Thus, the record shows that applicant’s services do or
will come from the place named in the mark; and therefore a
public association of the services with the place named in
the mark is presumed. That is, because there is clearly an
association of applicant’s restaurant services with the
place named in the mark (Cleveland), we presume a public
Ser. No. 75/429062
14
association of the services with the place from the fact
that applicant’s services would come from the geographical
place named in the mark.
Because both parts of the enunciated test have been
met, we find CLEVELAND SPORTS HALL OF FAME CAFE is
primarily geographically descriptive of applicant’s
restaurant services within the meaning of the Trademark
Act.
While the two grounds for refusal asserted by the
Examining Attorney may not be mutually exclusive,10
nonetheless, because we have decided the case on the
Section 2(e)(2) ground--primarily geographically
descriptive, we do not reach the Examining Attorney’s
Section 2(e)(1) ground--merely descriptive.
Decision: The refusal to register under Section
2(e)(2) is affirmed.

10 See In re Urbano, 51 USPQ2d 1776, 1780 (TTAB 1999).