Robert A. Schederv.Touristik Arbeitgemeinschaft Romantische Straße GbR

Trademark Trial and Appeal Board

Jun 19, 2007

No. 92045257 (T.T.A.B. Jun. 19, 2007)

Mailed: June 19, 2007
Skoro
Cancellation No. 92045257

ROBERT A. SCHEDER

v.

TOURISTIK ARBEITSGEMEINSCHAFT
ROMANTISCHE STRABE GbR

Before Walters, Rogers and Cataldo,
Administrative Trademark Judges.

By the Board:

Touristik Arbeitsgemeinschaft Romantische Strabe
(“Registrant”) owns U.S. Reg. No. 3011652, issued on
November 1, 2005,1 on the Principal Register for the mark
ROMANTIC ROAD for certain tourism services and certain
publication services in, respectively, Classes 35 and 41.2

1 The application which matured into the subject registration was
filed under the Madrid Protocol, Section 66(a) of the Trademark
Act, 15 U.S.C. § 1141(f). The application as filed was based on
International Registration No. 0837370, which was itself based on
German Registration No. 302 39 858.

2 U.S. Reg. No. 3011652 is for “Promotion of tourism through
marketing and advertising; distribution of advertising material,
preparing signboard advertising for others; conducting
promotional events in the field of tourism and marketing in
connection with tourism and exhibitions for commercial and
advertising purposes; providing of commercial information for
business purposes about all members and partners; advertising for
flat rate offers for providing of food, drink and temporary
accommodation” in Class 035 and “Publication of printed
information material in different languages, publication of
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT
PRECEDENT OF THE
TTAB
Cancellation No. 92045257
2
On December 12, 2005, Robert A. Scheder (“Petitioner”)
filed a petition to cancel only the International Class 35
services in the registration, claiming that the mark is
primarily geographically descriptive. Petitioner alleges
that Registrant’s continued use and registration of ROMANTIC
ROAD in connection with the identified services “damages
[his] business because [he is] engaged in the sale of
related goods and services and [he has] an interest in using
the term 'Romantic Road' descriptively in [his] business”
(Pet. ¶ 1).3
Registrant denied all of the salient allegations.
This case now comes up on Registrant’s motion for
summary judgment on petitioner's claim of geographic
descriptiveness, filed September 1, 2006.4 In its motion,

printed matter, printed information material and printed media
notes; publication of brochures, prospectuses, accommodation
lists, events calendars, cards and stickers conducting of
seminars and lectures in the field of tourism for commercial and
advertising purposes” in Class 041. It is noted that registrant
also owns U.S. Reg. No. 3085665 for ROMANTIC ROAD and Design in
connection with services in Classes 35, 41 and 43.

3 Petitioner alleges that he has operated the Internet domain
www.romanticroad.com since 1997 and currently hosts forty
websites on it. (Resp. at p. 22). Petitioner alleges that his
service is related to registrant’s because he provides
information about the Romantic Road region of Germany. (Id.).

4 Petitioner filed two motions of his own, namely, a “motion to
cancel amendments” and a “motion to void” the application, both
based on allegedly incorrect owner names on the U.S.
registration. The ministerial change to the list of owner names
on the U.S. registration was a technical correction initiated by
the International Bureau in regard to the international
registration and subsequently effected by the USPTO in regard to
the Madrid Protocol extension filing. See 37 C.F.R. § 7.14.
Additionally, the International Registration has been assigned
Cancellation No. 92045257
3
Registrant contends that the mark is not primarily
geographically descriptive of the services it renders5 and
in support Registrant provides documentary evidence of the
history of the mark. In response, Petitioner challenges
Registrant’s documentary evidence and has submitted maps and
other references to the area known as the “Romantic Road”.
The burden is on the party moving for summary judgment
to demonstrate the absence of any genuine issue of material
fact, and that it is entitled to summary judgment as a
matter of law. Fed. R. Civ. P. 56(c). See also Celotex
Corp. v. Catrett, 477 U.S. 317 (1986). The evidence of
record and any inferences, which may be drawn from the
underlying undisputed facts, must be viewed in the light
most favorable to the non-moving party. See Olde Tyme Foods
Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed.
Cir. 1992). In considering the propriety of summary

and the assignment recorded in the USPTO. Accordingly, the new
owner, as reflected in the Assignment Branch records, recorded at
Reel 3472/Frame 0712 on February 1, 2007 with an execution date
of October 6, 2006, is hereby substituted as the registrant.
We note that the petition for cancellation contains only a
single claim, geographic descriptiveness, against only one (1)
class in the involved registration. The two motions directed to
ownership are essentially motions that seek entry of judgment for
petitioner based on unpleaded issues and therefore are denied for
that reason, apart from their being rendered moot by the
International Bureau's actions.

5 Registrant also argues that Petitioner does not have standing
to bring this petition. However, to the extent Petitioner
alleges that he is being sued in Germany by registrant to obtain
the domain name www.romanticroad.com, and registrant is using
ownership of its U.S. registration in support of that suit,
Petitioner has pleaded standing.
Cancellation No. 92045257
4
judgment, the Board may not resolve issues of material fact
against the non-moving party; it may only ascertain whether
such issues are present. See Opryland USA, Inc. v. Great
American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471
(Fed. Cir. 1993); and Lloyd’s Food Products Inc. v. Eli’s
Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993).
Section 2(e)(2) of the Trademark Act prohibits
registration of marks which, when used in connection with
the identified goods and services, are primarily
geographically descriptive. For a plaintiff to establish
that a mark is primarily geographically descriptive, the
party must typically show that the mark is the name of a
place known generally to the public, and that the public
would make a goods/place association, i.e., believe that the
goods or services for which the mark is registered
originates 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 California Pizza Kitchen, Inc., 10
USPQ2d 1704 (TTAB 1988). However, “a case of
unregistrability cannot be made out simply by evidence
showing that the mark sought to be registered is the name of
a place known generally to the public.” See In re Societe
Generale 824 F.2d at 959, 3 USPQ2d at 1452. Further, it has
been held that a designation coined and promoted as a mark
but which incidentally designates a particular location can
Cancellation No. 92045257
5
function as a mark and is not primarily geographically
descriptive. See In re Pebble Beach Co., 19 USPQ2d 1687
(TTAB 1991). See also Horseshoe Bay Resort Sales Co. v.
Lake Lyndon B. Johnson Improvement Corporation, 53 S.W.3d
799 (Tex. App. 2001).
In this case, Registrant does not dispute that ROMANTIC
ROAD has come to identify a specific geographic region, and
that its goods and services originate from there, but argues
that ROMANTIC ROAD is not primarily geographically
descriptive because its primary significance is as a
trademark/service mark to designate Registrant’s goods and
services.
According to the documented history provided by
Registrant, the term ROMANTIC ROAD6 was coined7 in 1950 by a
small group of city tourist boards in Southern Germany who
formed a joint venture8 to offer travel services and promote
tourism in the American-occupied portion of Southern
Germany. (Reg.’s Mot. Summ. J. Ex. A, Decl. of
Wunschenmeyer, managing director of current registrant at ¶¶

6 In German the term, as translated, is Romantische Straße.

7 Petitioner states that the explicitly English term “Romantic
Road” does not appear in the minutes and that the German National
Tourist Board officially gave the series of roads the name
“Romantic Road”. There is no genuine dispute that Registrant's
predecessors created the term.

8 Petitioner challenges registrant's translation of a German
term, contending it does not translate to joint venture, but
rather to working group. This is not, however, an issue of fact
material to the involved claim.
Cancellation No. 92045257
6
4-7). The term was coined to refer to their promotional and
travel services along the 350-kilometer series of roads
connecting Würzburg near the River Main to the city of
Füssen near the Alps. (Reg.’s Mot. Summ. J Ex. B., Minutes
of Meeting of the Joint Venture at pp. 9-10).9
During the initial meeting of the members of the joint
venture, the members agreed to set up a guided tour
involving eighteen cities along the route and decided to
create a pictorial guidebook to illustrate the tourist
opportunities along the route.10 Since then additional
cities have joined the joint venture; the mark has been put
on signs alongside the roads through those cities; and
publicity has been extensive with each member city promoting
and offering services under the mark by publishing and
disseminating directories of local hotels and inns,
providing guided tours and most recently hosting

9 Excerpts from the minutes of the 1950 meeting (as translated)
provide, in pertinent part:
…

10 Petitioner again challenges the translation of the minutes
contending that the words translating as “set up guided tour” is
really a proposal for a committee to organize a tour along the
new street “for members of the press and relevant tourist offices
in order to promote the new street.” (Br. at ¶ 3). This is not,
however, an issue of fact material to the involved claim.
Cancellation No. 92045257
7
informational websites.11 (Decl. of Wunschenmeyer at ¶¶ 13,
16 and Reg’s. Mot. Summ J. Ex. C, Shareholder’s Agreement).
On January 1, 2005, a Shareholders’ Agreement went into
effect that legally established a civil law corporation12 as
a successor-in-interest to the unincorporated association
(joint venture). (Reg’s. Mot. Summ J. Ex. C). Additionally,
Registrant has approximately forty partners consisting of
local enterprises such as hotels, museums, restaurants,
etc., which promote services offered under the mark,
including tourism organizations, whose promotional
activities are directed by Registrant. (Ex. C at p. 16;
Decl. of Wunschenmeyer at ¶¶ 13-14; Reg’s Resp. 12 to
Petr's Interrog. # 12).
Petitioner has offered in response to the motion, his
own declaration disputing parts of Registrant’s
translations13 and providing copies of maps, road signs,
websites, internet search results and documents in German,
all purporting to demonstrate that ROMANTIC ROAD identifies
a physical location.

11 The “Official Website” of registrant is
www.romantischestrasse.de/, and the romantischestrasse portion
translates as romantic road. The ".de" is a top-level domain,
specifically, the country code for Germany.

12 The agreement established Touristik-rbeitsgemeinschaft
Romantische Strasse, GbR. (Ex. C at p. 15).

13 Petitioner’s challenges to respondent’s translations do not
raise any genuine disputes as to any material fact.
Cancellation No. 92045257
8
As noted above, the burden is on the party moving for
summary judgment, in this case Registrant, to demonstrate
the absence of any genuine issue of material fact, and that
it is entitled to summary judgment as a matter of law. Fed.
R. Civ. P. 56(c). See also Celotex Corp. v. Catrett, 477
U.S. 317 (1986). Undisputed facts as established by
Registrant in this case14 are that the mark, ROMANTIC ROAD,
was coined in 1950 to offer travel services and promote
tourism to an area of occupied Germany and the term
continues to be used by registrant in connection with these
services and the term, now in use for over fifty (50) years,
has become a known travel destination. Thus, Registrant has
set out a prima facie case that ROMANTIC ROAD functions
primarily as a mark and qualifies for protection under the
Pebble Beach analysis.
Petitioner, in responding to the motion and attempting
to counter the prima facie case, has not presented
countervailing facts sufficient to raise a genuine issue of
material fact.
In this case, we find no genuine issue that, as a term
coined by Registrant to promote tourism, ROMANTIC ROAD is a
mark that is used variously by Registrant and those
authorized by Registrant to promote tourism among the member

14 The minutes of a joint venture in 1950; and a shareholder’s
agreement that went into effect on January 1, 2005 establish
these facts.
Cancellation No. 92045257
9
cities. It is not merely or primarily a geographic term,
but has always been a term associated with Registrant and
its services. The fact that the coined term has developed a
reputation connoting tourism in a particular geographic
region does not necessarily make that term primarily
geographically descriptive under Section 2(e)(2). Indeed,
the undisputed fact that the mark ROMANTIC ROAD is well
known, and that people may be familiar with the tourism area
comprising the ROMANTIC ROAD, establishes that it functions
primarily as a mark, because it is through Registrant’s
efforts that the name given by Registrant and its
predecessors in interest to the region has come to be
recognized as a source of tourism-related services, albeit
in a particular location. In re Pebble Beach, 19 USPQ2d at
1688-89.
Therefore, because the Board finds that there is no
genuine issue of material fact, and because Registrant is
entitled to judgment as a matter of law on this issue,
Registrant’s motion for summary judgment is granted and
summary judgment in favor of Registrant is hereby entered.
The petition to cancel is dismissed with prejudice.
.o0o.