The Hermitage Group, Inc.

Trademark Trial and Appeal Board

Jan 15, 2002

No. 75533137 (T.T.A.B. Jan. 15, 2002)

1/15/02

Paper No. 17
TJQ

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re The Hermitage Group, Inc.
________

Serial No. 75/533,137
_______

Anthony S. Zummer of Palmatier & Zummer for applicant.

Lynn A. Luthey, Trademark Examining Attorney, Law Office
102 (Thomas Shaw, Managing Attorney).
_______

Before Quinn, Holtzman and Drost, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application has been filed to register the mark
shown below

for “printed art reproductions.”1

1 Application Serial No. 75/533,137, filed August 10, 1998,
setting forth dates of first use as 1949.
THIS DISPOSITION
IS CITABLE AS PRECEDENT
OF THE T.T.A.B.

Ser No. 75/533,137
2
The Trademark Examining Attorney has refused
registration under Section 2(a) of the Trademark Act on the
ground that applicant’s mark falsely suggests a connection
with an institution, namely the Hermitage Museum in Russia.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have submitted briefs.2
An oral hearing was not requested.
Applicant, in urging that the refusal be reversed,
asserts that the name of the museum in St. Petersburg,
Russia comprises Russian words in the Cyrillic alphabet,
and that “Hermitage” is merely an “Americanization” of the
Russian name. Further, applicant contends that the word
“hermitage” does not uniquely and unmistakably identify the
museum, but rather identifies many places and things. In
support of its position, applicant submitted listings of
the word “hermitage” from ten dictionaries, none of which
refer to the museum. Applicant points out that these

2 The Board takes judicial notice of the dictionary definition of
the word “Cyrillic” (Appendix D) attached to the Examining
Attorney’s brief. There is a problem, however, with two of the
four pages forming “Appendix C” attached to her brief.
Applicant, in its reply brief, has objected to pages 3 and 4
retrieved from the website of the Heritage Museum. Applicant’s
objection grounded on the untimely submission of these pages is
well taken. Inasmuch as these two pages relating to the “Museum
Stores” were not properly introduced in the record, this evidence
and the Examining Attorney’s argument based thereon (“art museums
often reproduce their own works of art for sale” and it is
“commonplace for museums to operate retail gift shops and on-line
Ser No. 75/533,137
3
“scholarly” dictionaries, some of which are multi-volume,
define “hermitage” as, firstly, a hermit’s place and,
secondly, a wine district. The absence of any reference in
these dictionaries to the museum demonstrates, according to
applicant, that the term “hermitage” is not universally
identified as the name of the museum in Russia. Applicant
also submitted an Internet search print-out of 100 websites
dealing with a variety of places and things named
“Hermitage,” including towns, hotels, businesses, an
appellation of wine and the home of President Andrew
Jackson.
The Examining Attorney maintains that the mark sought
to be registered falsely suggests a connection with the
Hermitage Museum in Russia, a place listed in the one
dictionary definition relied upon by her. The Examining
Attorney asserts that “[t]he Hermitage is a fine art museum
in St. Petersburg (formerly known as Leningrad), Russia”3
and that “[t]he world-renowned museum features works of art
and is known as the state museum of Russia.” (brief, p. 4)
The mark’s association with the museum is not dispelled by
the other meanings of “hermitage” because, according to the

retail stores featuring works from the museum’s collection”) have
not been considered in reaching our decision.
3 St. Petersburg, Russia has been renamed three times since its
founding. In June, 1991, the city’s name reverted back to “St.
Petersburg” from “Leningrad.”
Ser No. 75/533,137
4
Examining Attorney, these meanings have little or nothing
to do with the goods identified in the application, namely
printed art reproductions. In addition to the one
dictionary definition, the Examining Attorney relied upon
ten excerpts retrieved from the NEXIS database showing
references to the Hermitage Museum in Russia, and two pages
from the museum’s website.
The Record
Applicant has relied upon listings of the term
“hermitage” from the following ten dictionaries: The
Oxford English Dictionary, Webster’s Third New
International Dictionary of the English Language, The
Century Dictionary and Cyclopedia, Funk & Wagnalls New
Standard Dictionary of the English Language, Funk &
Wagnalls New Comprehensive International Dictionary of the
English Language, The Concise Oxford Dictionary of Current
English, Random House Webster’s College Dictionary, The
Oxford Desk Dictionary, The Oxford Modern English
Dictionary, and Merriam-Webster’s Collegiate Dictionary.
The listings are quite consistent in their definitions of
the term “hermitage,” and the following one, taken from
Webster’s Third International Dictionary is representative:
“the habitation of a hermit; a secluded residence or
retreat; a house of various monastic orders; a chiefly red
Ser No. 75/533,137
5
Rhone Valley wine made from grapes grown above the commune
of Tain-l’Ermitage.” As pointed out by applicant, not a
single definition refers to the museum in Russia.
The dictionary definition of “hermitage” relied upon
by the Examining Attorney reads as follows: “the
habitation of a hermit; any secluded place of residence or
habitation; retreat; hideaway; (cap.) a palace in Leningrad
built by Catherine II and now used as an art museum.”
Random House Unabridged Dictionary (2d ed. 1993).
Aside from the dictionary definitions, applicant’s
evidence includes a print out of the first 100 websites
shown by way of an Internet search of “hermitage”; five of
the sites concern the Hermitage Museum. The evidence of
record shows that the term “Hermitage” names two towns (in
Arkansas and Pennsylvania), a street (in Chicago), five
hotels, two monasteries, President Andrew Jackson’s home
(in Tennessee), an animal shelter, a squash club,
condominiums and an insurance business. Applicant’s
evidence also shows that “Hermitage” identifies an
appellation of origin of a particular wine of Rhone, France
(“Appellation Hermitage Controlee”).
The ten NEXIS articles submitted by the Examining
Attorney make various references to the “Hermitage Museum,”
with one reference to the museum as “Hermitage” per se.
Ser No. 75/533,137
6
Also of record is the excerpt retrieved from the
museum’s website (www.hermitage.ru) indicating that the
museum is “[s]ituated in the center of St. Petersburg” and
that “the State Hermitage Museum is housed in five
magnificent buildings created by celebrated architects of
the 18th to 19th century.” The website also states “[p]ut
together throughout two centuries and a half, the Hermitage
collections of works of art (over 3,000,000 items) present
the development of the world culture and art from the Stone
Age to the 20th century.”
In addition to the evidence of record, we take
judicial notice of the following encyclopedia excerpts4 that
shed more light on the Hermitage Museum:
Hermitage: in full STATE HERMITAGE,
Russian GOSUDARSTVENNY ERMITAZH, art
museum in Leningrad (formerly St.
Petersburg) founded in 1764 by
Catherine the Great as a court museum.
It adjoined the Winter Palace and
served as a private gallery for the art
amassed by the Empress. Under Nicholas
I the Hermitage was reconstructed
(1840-52), and it was opened to the
public in 1852. Following the October
Revolution of 1917, the imperial
collections became public property.
Masterpieces of western European
painting since the Middle Ages, as well
as Russian art, are represented. The

4 Such evidence, as a standard reference work, is proper subject
matter for judicial notice. See: The B.V.D. Licensing Corp. v.
Body Action Design Inc., 846 F.2d 727, 6 USPQ2d 1719 (Fed. Cir.
1988); and In re Mahony, 421 F.2d 742, 164 USPQ 572, 575 (CCPA
1970).
Ser No. 75/533,137
7
Hermitage also has extensive holdings
of Oriental art, especially noteworthy
being its collection of the art of
Central Asia.
5 The New Encyclopaedia Britannica
(Micropaedia)(15th ed. 1988)

Leningrad: ...Between the square and
the river rises the huge and massive
rectangle of the Winter Palace, the
former principal residence of the
tsars...The whole complex, now called
the Hermitage, or State Hermitage
Museum, is a treasure-house of fine art
of worldwide significance that
originated in 1764 as the private
collection of the tsarina Catherine II.
22 The New Encyclopaedia Britannica
(Macropaedia)(15th ed. 1988)

Union of Soviet Socialist Republics—-
Museums and Galleries: Museum
attendance in the Soviet Union is
high...Famous museums include (in
Moscow) the Central Lenin
Museum...Leningrad has the Hermitage...
28 The New Encyclopaedia Britannica
(Macropaedia)(15th ed. 1988)

The Law
Section 2(a) of the Act prohibits, inter alia, the
registration of a mark if it “consists of or
comprises...matter which may...falsely suggest a connection
with persons, living or dead, institutions, beliefs, or
national symbols.
In order to warrant a refusal under this portion of
Section 2(a), the Examining Attorney, who has the burden of
proof, must show that (i) the mark is the same as, or a
Ser No. 75/533,137
8
close approximation of, the name or identity previously
used by the other institution; (ii) the mark would be
recognized as such in that it points uniquely and
unmistakably to that institution; (iii) the institution
named by the mark is not connected with the activities
performed by the applicant under the mark; and (iv) the
prior user’s name or identity is one of sufficient fame or
reputation that a connection with such institution would be
presumed when applicant’s mark is used on applicant’s
goods. In re Urbano, 51 USPQ2d 1776 (TTAB 1999); In re
North American Free Trade Association, 43 USPQ2d 1282 (TTAB
1997); and In re Kayser-Roth Corp., 29 USPQ2d 1379 (TTAB
1993). The term “institution” as used in Section 2(a)
certainly encompasses museums. In re North American Free
Trade Association, supra.
Analysis
The mark sought to be registered is a close
approximation of the name of the museum at issue, namely
the Hermitage Museum (or Hermitage) in St. Petersburg,
Russia, and the marks would be recognized as such. We are
not persuaded by applicant’s argument that the name of the
museum is as it is written in Russia in the Cyrillic
alphabet. As shown by the museum’s website in the English
language version, the translation of the name from the
Ser No. 75/533,137
9
Cyrillic is The State Hermitage Museum. Inasmuch as the
issue herein must be decided based upon the perception of
the relevant purchasing public in this country, the English
translation that will be encountered in the United States
must control.
As indicated on the museum’s website, the museum’s
collection exceeds 3 million works of art, and the
encyclopedia describes the holdings as “extensive.”
Applicant’s evidence of “Web Directory Sites” includes a
reference to the website of the museum, reading in part
“the five buildings which comprise the Hermitage now house
one of the finest art collections in the world.” Another
website refers to the Hermitage Museum as “one of the
world’s great museums.” Further, the encyclopedia refers to
the museum as “famous” and “a treasure-house of fine art of
worldwide significance that originated in 1764.” The
museum has been open to the public since 1852. Given the
renown of the museum, consumers of printed art
reproductions would recognize the mark as a close
approximation of the name of the museum, namely the
Hermitage.
The major thrust of applicant’s argument is that the
term “Hermitage” does not uniquely and unmistakably point
to the Hermitage Museum. We acknowledge applicant’s point
Ser No. 75/533,137
10
that there are a variety of meanings of the term other than
as the name of a museum. As shown by applicant, the name
identifies a variety of things and places, including an
appellation of origin of wine, towns and the home of a
former President of the United States.
Notwithstanding these other meanings, we must consider
the mark sought to be registered as a whole in deciding the
issue of whether it falsely suggests a connection with the
Hermitage. In this case, the design which applicant has
adopted reinforces that the mark will be identified with
the renowned art museum because it depicts an artist’s
palette and brushes. See: In re North American Free Trade
Association, supra at 1285. This is especially the case
given that the goods in the application are “printed art
reproductions.” See: The Board of Trustees of the
University of Alabama v. BAMA-Werke Curt Baumann, 231 USPQ
408, 411 (TTAB 1986). There is nothing to suggest that the
other meanings of the term “hermitage” have anything to do
with art; thus, the only “person” or “institution” which
the mark HERMITAGE with an artist’s palette and brushes
design possibly identifies is the Hermitage Museum. The
use by applicant appropriates the museum’s identity. The
mark, by its very nature, falsely suggests a connection
with the Hermitage art museum in Russia. See: The
Ser No. 75/533,137
11
University of Notre Dame v. J. C. Gourmet Food Imports Co.
Inc., 703 F.2d 1372, 217 USPQ 505, 509 (Fed. Cir. 1983),
citing FBI v. Societe M. Bril & Co., 187 USPQ 685, 687
(D.D.C. 1975).
With respect to whether the museum is connected with
the printed art reproductions sold by applicant under its
mark, the record is silent. Thus, we are left to find that
applicant’s mark falsely suggests that its printed art
reproductions are of art displayed in the Hermitage, or are
of artists who have some of their works displayed in the
museum or are of artists schooled at the Hermitage. The
University of Notre Dame v. J. C. Gourmet Food Imports Co.
Inc., supra at 509 (Fed. Cir. 1983).
Conclusion
The evidence of record convinces us that the Hermitage
is the name of an art museum of sufficient fame or
reputation that a connection with the museum would be
presumed when applicant’s mark is used on printed art
reproductions.5 Such goods obviously are closely related to

5 In connection with a likelihood of confusion refusal that was
later withdrawn in the involved application, we note the
existence of at least three registrations of marks incorporating
the term “Hermitage” for goods in the arts and/or crafts field.
Suffice it to say, we are not privy to the records in these
registrations and, in any event, the determination of
registrability of particular marks by the Office cannot control
the result in another case. See: In re Nett Designs, Inc., 236
F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
Ser No. 75/533,137
12
art museums; in this case, specifically the Hermitage
Museum.6 We find that the Office has met its burden of
proving that applicant’s mark HERMITAGE and design falsely
suggests a connection with the Hermitage Museum.
Decision: The refusal to register is affirmed.

6 Applicant places heavy reliance on the Federal Circuit’s
decision in Notre Dame. We agree with the Examining Attorney,
however, that the present case is distinguishable because here
applicant’s goods are for essentially the same goods for which
the Hermitage is known, namely art works.