Napa Valley Foods Inc.

Trademark Trial and Appeal Board

Feb 22, 2011

No. 77627933 (T.T.A.B. Feb. 22, 2011)

Mailed:
February 22, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Napa Valley Foods Inc.
________

Serial Nos. 77627932, 77627933, 77627934 and 77627935
_______

Jeffrey M. Furr of Furr Law Firm for Napa Valley Foods Inc.

Amy E. Hella, Trademark Examining Attorney, Law Office 110
(Chris A. F. Pedersen, Managing Attorney).
_______

Before Seeherman, Ritchie and Wolfson, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Napa Valley Foods Inc. (hereafter “applicant”), a UK
corporation, has filed four trademark applications, two for
NAPA FOODS in standard character format,1 and two for Napa
Foods and design, as shown below:

1 The standard characters in which the mark is depicted show the
initial letters in upper case and the remaining letters in lower
case, i.e., Napa Foods.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser Nos. 77627932, 77627933, 77627934 and 77627935
2

This mark is described as consisting of “the words ‘NAPA
FOODS’ with a mountain and sun design in an oval.” Color
is not claimed as a feature of the mark.
All four applications were filed on December 6, 2008,
pursuant to Section 44(e), based on Nigerian registrations,
and are for the following goods:
Application Serial No. 77627932 for
NAPA FOODS and Application Serial No.
77627935 for NAPA FOODS and design are
both for “baking powder, beef and
chicken seasoning, bread improvers,
namely, leavening agents, baking
powder, cream of tartar for bread
baking purposes, chocolate powder,
coffee, corn flakes, powder for making
custard, lollipops, mayonnaise, salad
cream in the nature of dressings,
spices, tea bags, tomato ketchup,
yeast, processed oats.”

Application Serial No. 77627933 for
NAPA FOODS and Application Serial No.
77627934 for NAPA FOODS and design are
both for “tomato paste in tins and in
sachet form, seafood, namely, canned
pilchards, baked beans, bouillon cubes,
canned fruits, canned mixed vegetables,
canned peas, canned sardines in flat
and round can forms, cooking oils,
corned beef, evaporated milk, flaked
tuna fish, mackerel, margarine, milk
powder, olive oil, tuna chunks.

Ser Nos. 77627932, 77627933, 77627934 and 77627935
3
All four applications have been refused pursuant to
Section 2(e)(3) of the Trademark Act, 15 U.S.C.
§ 1052(e)(3), on the ground that applicant’s marks are
primarily geographically deceptively misdescriptive of the
identified goods.
Applicant has appealed the refusals of all four
applications, and filed appeal briefs. After the examining
attorney filed her brief in Application Serial No. 77627935
she filed a request to consolidate all four appeals.
Because the appeals involve common questions of law and
fact, the Board granted the request, and the examining
attorney filed a consolidated appeal brief for the
remaining three appeals. Applicant did not submit reply
briefs.
Section 2(e)(3) of the Trademark Act prohibits the
registration of a mark which, when used on or in connection
with the goods of the applicant, is primarily
geographically deceptively misdescriptive of them. The PTO
must deny registration under §1052(e)(3) if (1) the primary
significance of the mark is a generally known geographic
location, (2) the consuming public is likely to believe the
place identified by the mark indicates the origin of the
goods bearing the mark, when in fact the goods do not come
from that place, and (3) the misrepresentation is a
Ser Nos. 77627932, 77627933, 77627934 and 77627935
4
material factor in the consumer's decision. See In re
California Innovations Inc., 329 F.3d 1334, 66 USPQ2d 1853,
1858 (Fed. Cir. 2003).
With respect to the first requirement of the test for
whether a mark is primarily geographically deceptively
misdescriptive, it is the examining attorney’s position
that “NAPA’ is a generally known geographic place,
referring to a “city, county and region in California known
for their wines, foods, produce and cattle.” Brief,
unnumbered p. 4. In support of her position that the
primary significance of the mark is a generally known
place, the examining attorney has submitted a gazetteer
entry and numerous articles taken from the NEXIS database
and from various websites, including the following:
Napa, city (17 sq mi/44 sq km, 1990
pop. 61,842) Napa co., W Calif, 33
mi/53 km NNE of San Francisco, on the
Napa R; 33°18’N 122°18’W. Mfg.
(wineries/ medical equip., electronic
equip., beverages, computer prods.,
apparel, plastic prods., wood prods.;
printing and publishing). Grapes and
other fruits (esp. citrus fruit) are
grown in the adjacent Napa valley,
which is famous for the wines that have
been made here since the late 1870s.
Numerous wineries in the region.
Growing city, almost doubled in pop.
bet. 1970 and 1990. Seat of Napa
Valley Co. (2-year). Napa Co. Airport
to S. Inc. 1872.
The Columbia Gazetteer of North
America, © 2000.
Ser Nos. 77627932, 77627933, 77627934 and 77627935
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7 Day Napa Cooking, Wine & Dine (title)
…Come along and explore the Napa Valley
with us and discover the distinct
personalities of this world famous food
and wine region.
www.tourgate.com

…Since the 1980s Napa Valley has been a
destination for food and wine
aficionados. Locals brag that it is
the second most popular tourist
destination in California, behind only
Disneyland.
“The Kansas City Star,” May 14, 2008
While not disputing the geographic significance of
“Napa Valley,” applicant asserts that “NAPA” is not the
same as “Napa Valley,” and therefore the mark does not
identify a generally known geographic place or location.
Applicant relies on definitions of “napa” as meaning “a
very soft glove leather made from the skin of a sheep, kid
or goat” and “Chinese cabbage.” Applicant also points out
that NAPA is an acronym for National Academy of Public
Administration and National Association of Performing
Artists, and that Google searches for Napa retrieve
references to an auto care chain, the National Academy of
Public Administration, National Asphalt Pavement
Association, National Association for the Practice of
Anthropology and software systems. Applicant states that
the mark was “chosen by the client due to the fact that it
Ser Nos. 77627932, 77627933, 77627934 and 77627935
6
is easy to pronounce in many languages.” Brief, unnumbered
p.2.
We are not persuaded by applicant’s arguments. First,
applicant’s explanation as to why it chose the mark is, to
say the least, disingenuous in view of the fact that
applicant’s corporate name is Napa Valley Foods, Inc.
Second, even if applicant’s motives in adopting the mark
were totally innocent, applicant may still not register a
mark if it is primarily geographically deceptively
misdescriptive. As for the other meanings that applicant
puts forth for its mark, the logical extension of
applicant’s arguments that the consuming public for its
identified goods would associate NAPA with any of these
organizations or companies is that applicant’s mark cannot
be registered because it falsely suggests a connection with
one of these entities. We feel confident that applicant
does not want us to adopt this position. In any event, the
examining attorney has explained, and has cited case law in
support of her position, that “the fact that the mark may
have other meanings in other contexts does not alter its
geographic significance in the context of the application.”
Brief, unnumbered p. 9. If used in connection with the
goods identified in the application, the various meanings
for NAPA claimed by applicant, including a soft glove and
Ser Nos. 77627932, 77627933, 77627934 and 77627935
7
Chinese cabbage, are not the meanings that the relevant
public would ascribe to the mark.
Rather, the evidence submitted by the examining
attorney, including numerous articles which describe Napa
Valley as being famous for food and wine, persuades us that
consumers viewing the term NAPA for the identified food
products would understand NAPA to refer to the geographic
location, Napa Valley.2 In this connection, we note that
“Napa Valley” is frequently referred to as Napa. See, for
example, the headline “A nose for Napa—and Sacramento”
(“Sacramento Bee,” March 4, 2009); “The calendar shows the
bare essence of Napa and is an entertaining and subtly
revealing look at Napa agriculture” (“Vallejo Times
Herald,” Oct. 13, 2007); “What happened in Napa several
years ago is now happening here [Long Island]” (“The New
York Times,” April 25, 1991). Thus, the Office has met the
first part of the test, that the mark’s primary
significance is a generally known geographic location,
i.e., Napa Valley, CA.
The second requirement for showing that NAPA is
primarily geographically deceptively misdescriptive is that

2 Although the Columbia Gazetteer entry submitted by the
examining attorney lists “Napa” as a city and county in
California, the articles discussing the geographic region,
including its connection with food, concentrate on the Napa
Valley, which is adjacent to the city.
Ser Nos. 77627932, 77627933, 77627934 and 77627935
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the consuming public is likely to believe the place
identified by the mark indicates the origin of the goods
bearing the mark, when in fact the goods do not come from
that place. There is no dispute that applicant’s goods do
not come from Napa Valley. As for showing a goods/place
association between Napa and the goods identified in the
applications, the examining attorney has submitted a number
of articles and webpages that show a connection between
Napa Valley and food, including the following:
Harris says the big advantages Napa has
as a home for great restaurants include
all the local foodstuffs from one of
the planet’s singular agricultural
valleys and the extremely high
standards set by so many of the
region’s restaurants and wineries.
“This is literally a quiet rural place,
yet the driving force in Napa is food
and wine,” she said.
“Sacramento Bee,” March 4, 2009
Much of the great cooking in Napa is
taking place at the wineries, some of
which have chefs on the premises and
others of which use the stupendous
caterers who have been drawn to the
area.
. . .
Napa’s food rivals any produced in
France these days.
“Akron Beacon Journal,” Sept. 18, 1996

… Napa, Sonoma and other food-famous
regions.
“Sacramento Bee,” Nov. 25, 2006

Ser Nos. 77627932, 77627933, 77627934 and 77627935
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Interest isn’t limited to foodie
capitals like Napa Valley and New
Orleans, he added.
“Detroit Free Press,” April 16, 2009

Food in Napa (title)
Napa is a fantastic destination for
foodies. From restaurants, farmers
markets and food festivals to culinary
schools and food-and-wine pairings,
Napa offers a wealth of opportunities
to enjoy, explore, and celebrate food.
The Napa Valley is known for hosting an
excellent collection of restaurants,
both in quality and variety….
Yountville in particular is known as a
gourmet destination, with excellent
restaurants such as The French Laundry
and Bouchon….
www.destination360.com

Wine and weather provide two reasons to
travel to Napa; Food is another. The
golden valley is a mecca for forward-
thinking chefs, whipping California
ingredients into Mediterranean shape.
“The Columbian,” Oct. 15, 1996

Clearly there is not only an association between Napa
and food, but Napa is known for its food; as the articles
state, it is a destination for foodies where the food
rivals any produced in France. Applicant argues, however,
that Napa Valley is not well known in association with the
specific goods which are identified in its applications.
We acknowledge that the examining attorney has not pointed
out the specific items in the applications for which she
claims a goods/place association; her position is that
because of the recognition and indeed renown of Napa Valley
Ser Nos. 77627932, 77627933, 77627934 and 77627935
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for food, the consuming public is likely to believe that
any food items sold under the trademark NAPA come from that
geographic area. Although we do not necessarily agree that
a goods/place association would exist between any food and
Napa, we also recognize that it is not necessary for the
examining attorney to demonstrate such an association with
each of the items listed in each of the applications. If
that were the case, an applicant could obtain exclusive
rights to a primarily geographically deceptively
misdescriptive term merely by including in its
identification of goods an item for which the term is not
geographically deceptively misdescriptive. Thus, the
examining attorney will have met her burden as long as she
can show a goods/place association between at least one of
the goods in each single-class application, and Napa. Cf.
In re Analog Devices, Inc., 6 USPQ2d 1808, 1810 (TTAB
1988), aff'd, 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir.
1989) (unpublished) (registration is properly refused if
the subject matter for registration is generic of any one
of the goods for which registration is sought); In re
Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed.
Cir. 2005), quoting, Application of Richardson Ink Co., 511
F.2d 559, 185 USPQ 46, 48 (CCPA 1975) (“Our predecessor
court ... has stated that registration should be refused if
Ser Nos. 77627932, 77627933, 77627934 and 77627935
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the mark is descriptive of any of the goods for which
registration is sought”).
We find that the evidence of record amply demonstrates
a goods/place association between Napa and at least some of
the goods identified in each of applicant’s applications.
Application Serial Nos. 77627933 and 77627934 include, in
their identifications, canned fruits and olive oil. The
Gazetteer entry states that “[g]rapes and other fruits
(esp. citrus fruit)” are grown in Napa Valley, and several
articles refer to olive oil as a locally produced product
(emphasis added):
Food, Wine Top Lists in Napa Valley
(headline)
In California, olive oil has nearly as
many variables as wine--vintage,
estate, flavor, type of olive.
...
Katz and Co., a Napa food company,
features eight new releases, including
B.R. Cohn Estate Sonoma Valley oil in a
numbered, hand-etched bottle.
“South Bend Tribune,” Oct. 14, 1996

The food was simple but lovely--grilled
chicken breasts with rosemary, platters
of homemade sausages, baby lettuces
with locally produced olive oil, and
baskets of the wonderful, crusty bread
that is made in at least a half-dozen
serious bakeries in the valley.
“Akron Beacon Journal,” Sept. 18, 1996

Another of the popular Napa food
festivals is the gourmet A Taste of
Yountville festival in mid-March,
during which more than 35 local
Ser Nos. 77627932, 77627933, 77627934 and 77627935
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wineries, restaurants, and olive oil
and mustard producers offer tastings.
www.destination360.com

… there truly is a rich agricultural
history here, from hundreds of acres of
fruit and nut trees, to cattle, goat
and sheep farming and on to cheese,
olive oil and other distinctive Napa
food products.
www.napavalleyslowfood.org

As for the goods in Applications Serial Nos. 77627932
and 77627935, the identifications include spices, beef and
chicken seasoning, ingredients for making bread, i.e.,
leavening agents and cream of tartar, yeast, baking powder,
salad cream in the nature of dressings, mayonnaise, tea
bags and tomato ketchup. One of the articles submitted by
the examining attorney specifically mentioned the “baskets
of the wonderful, crusty bread that is made in at least a
half-dozen serious bakeries in the valley,” “Akron Beacon
Journal,” Sept. 18, 1996. Other articles feature other
items (emphasis added):
The downtown Napa farmers market is a
great place to sample great food in
Napa. The market is held on Tuesdays
and Saturdays, and you’ll want to
arrive early to enjoy the biggest
selection--the first buyers show up at
7:30 am, and the market wraps up at
lunchtime. Among the varied products
at the market, you’ll find fruits,
vegetables, olive oil, baked goods,
chocolates, jams and preserves, tea,
and flowers.
www.destination360.com
Ser Nos. 77627932, 77627933, 77627934 and 77627935
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Back then there wasn’t much good,
casual food in the Napa Valley. The
popularization of the farm-to-table
menus that now pepper the valley can be
partly attributed to her. On her first
menu, for example, she made her own
ketchup with tomatoes from the garden,
and smoked her own ham for the ham and
Yarlsburg [sic] cheese sandwiches.
“The San Francisco Chronicle,” Jan. 3,
2009

The evidence of the “serious bakeries” in Napa Valley
supports a finding of a goods/place association between the
ingredients for baking listed in the applications, namely,
cream of tartar, leavening agents, yeast and baking powder.
The articles are also replete with mentions of the farm-to-
table culture of Napa and of restaurants making their
dishes with locally grown ingredients, including the
ketchup mentioned in the “Chronicle” article about
Mustard’s Grill. Moreover, the evidence about the fame of
Napa Valley restaurants, and their gourmet nature,3 shows a
goods/place relationship, because of the food that is
created in these restaurants, between seasonings, salad
dressings and spices, and Napa Valley. As the Court stated
in In re Save Venice Inc., 259 F.3d 1346, 59 USPQ2d 1778,
1784 (Fed. Cir. 2001):

3 “Napa Valley has also developed into a region that is renowned
for its creativity in the culinary arts. Gourmet chefs from all
around the world have moved to Napa Valley so that they can test
their gourmet talents.” www.streetdirectory.com, article about
“Napa Valley Wine Tasting Tours.”
Ser Nos. 77627932, 77627933, 77627934 and 77627935
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Because we consider that consumers may
assume that geographic regions, like
other commercial actors, are likely to
expand from their traditional goods or
services into related goods or
services, we hold that the
registrability of a geographic mark may
be measured against the public’s
association of that region with both
its traditional goods and any related
goods or services that the public is
likely to believe originate there. The
essence of the test is whether
consumers are likely to be confused by
the source of the related goods
identified by a distinctive geographic
mark.

Because applicant’s food items are related to the
restaurant services for which Napa Valley is famous and are
related to the food items sold in Napa, consumers are
likely to believe that the source of the goods identified
in applicant’s applications is Napa Valley. Thus, we find
that there is a goods/place association between applicant’s
goods and the geographic place named in the mark.
This brings us to the final requirement that must be
met to show that a mark is primarily geographically
deceptively misdescriptive, whether the misrepresentation
is a material factor in the consumer's decision. Applicant
contends, with respect to this point, only that “the mark
does not refer to a geographic location and the goods are
not similar to the goods associated with the geographic
location referred to by the examining attorney.” Brief,
Ser Nos. 77627932, 77627933, 77627934 and 77627935
15
unnumbered p.3. We have already found that NAPA would be
understood as referring to Napa Valley, and we have already
found that there is a goods/place association between at
least some of the goods in each application and the
geographic place named in the mark.
We also find that the Office has met its burden of
proving materiality. The record is replete with references
to Napa being a food mecca, and we have already quoted many
of the articles and websites in this opinion. A finding
that a geographic place is noted for or renowned for goods
supports a finding of materiality. There is no question
that Napa is famous for food, and because of this renown,
consumers are likely to buy food bearing the NAPA mark
because they think that the goods come from Napa Valley.
As the Court stated in In re California Innovations Inc.,
66 USPQ2d at 1857, in reviewing prior cases finding marks
to be geographically deceptive:
“[I]f there is evidence that goods like
applicant's or goods related to
applicant's are a principal product of
the geographical area named by the
mark, then the deception will most
likely be found material and the mark,
therefore, deceptive.” House of
Windsor, 221 USPQ at 57. “[I]f the
place is noted for the particular
goods, a mark for such goods which do
not originate there is likely to be
deceptive under §2(a) and not
Ser Nos. 77627932, 77627933, 77627934 and 77627935
16
registrable under any circumstances.”
Loew's Theatres, 769 F.2d at 768, n.6.

Because we find that the Office has met its burden of
proving that the primary significance of NAPA is a
generally known geographic location; that the consuming
public is likely to believe that NAPA indicates the origin
of applicant’s goods when in fact the goods do not come
from Napa; and the misrepresentation is a material factor
in the consumer's decision to buy the goods, we find that
applicant’s mark is primarily deceptively geographically
deceptive.
Decision: The refusal of registration of all four
applications is affirmed.