The Wayward Studio, LLCDownload PDFTrademark Trial and Appeal BoardFeb 27, 202087094239 (T.T.A.B. Feb. 27, 2020) Copy Citation Mailed: February 27, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board ———— In re The Wayward Studio, LLC _____ Serial No. 87094239 _____ The Wayward Studio, LLC, pro se. Barbara A. Gaynor, Trademark Examining Attorney, Law Office 115, Daniel Brody, Managing Attorney. _____ Before Ritchie, Adlin and Lebow, Administrative Trademark Judges. Opinion by Adlin, Administrative Trademark Judge: Applicant The Wayward Studio, LLC seeks a Principal Register registration for the proposed mark IT’S AMERICAN PRESS (standard characters, PRESS disclaimed) for “non-electric coffee makers.”1 The Examining Attorney refused registration under Section 2(e)(2) of the Trademark Act, 15 U.S.C. § 1052(e)(2), on the ground that the proposed mark is “primarily geographically descriptive” of Applicant’s goods. After the refusal became final, Applicant appealed and Applicant and the Examining Attorney filed briefs. 1 Application Serial No. 87094239, filed July 16, 2016 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based on use. Applicant later amended the application’s filing basis to an alleged bona fide intent to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). This Opinion is Not a Precedent of the TTAB Serial No. 87094239 2 I. Evidentiary Issue In its May 21, 2018 Office Action response, Applicant cited various websites in support of its arguments, but only provided web addresses, or hyperlinks to the sites, rather than printouts or images of the cited materials. In her subsequent Office Action, the Examining Attorney explained that “providing only a web address and/or hyperlink to Internet materials is not sufficient to introduce it into the record.” June 13, 2018 Office Action TSDR 3. Nevertheless, Applicant failed during prosecution to properly introduce the cited evidence by providing printouts or images of the sites it relies upon. We have therefore not considered the websites for which Applicant provided mere addresses/hyperlinks. In re I-Coat Co., LLC, 126 USPQ2d 1730, 1732- 33 (TTAB 2018) (“we will no longer consider Internet evidence filed by an applicant in an ex parte proceeding to be properly of record unless the URL and access or print date has been identified, either directly on the webpage itself, or by providing this information in a response”); In re Mueller Sports Medicine, Inc., 126 USPQ2d 1584, 1587 (TTAB 2018). The Board does not allow applicants to introduce Internet evidence merely by providing a web address or hyperlink. In re Olin Corp., 124 USPQ2d 1327, 1331 n.15 (TTAB 2017) (“Because the information displayed at a link’s Internet address can be changed or deleted, merely providing a link to a website is insufficient to make information from that site of record.”); In re HSB Solomon Associates LLC, 102 USPQ2d 1269, 1274 (TTAB 2012) (“reference to a website’s internet address is not sufficient to make the content of that website or any pages from that website of record”). Serial No. 87094239 3 Because Applicant has not introduced any other evidence, Applicant’s arguments in support of registration are all unsupported, which has severely limited their persuasiveness. As the Federal Circuit has held, "[a]ttorney argument is no substitute for evidence." Zheng Cai, d/b/a Tai Chi Green Tea Inc. v. Diamond Hong, Inc., 901 F.3d 1367 , 127 USPQ2d 1797, 1799 (Fed. Cir. 2018) (quoting Enzo Biochem, Inc. v. Gen-Probe Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005)); see also In re U.S. Tsubaki, Inc., 109 USPQ2d 2002, 2006 (TTAB 2014) (finding that there was no proof to support the statements in the record by counsel). II. Geographic Descriptiveness In order to establish that Applicant’s mark is primarily geographically descriptive, the Examining Attorney must establish that: (1) the primary significance of the mark sought to be registered is the name of a place known generally to the public; (2) the public would make a goods/place association, i.e. believe that the goods for which the applicant seeks registration originate in that place; and (3) the source of the goods is the geographic region named in the mark. In re Newbridge Cutlery Co., 776 F.3d 854, 113 USPQ2d 1445, 1448-49 (Fed. Cir. 2015) (quoting In re Societe Generale Des Eaux Minerales De Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450, 1452 (Fed. Cir. 1987) and In re Jacques Bernier, Inc., 894 F.2d 389, 13 USPQ 1725 (Fed. Cir. 1990)); TMEP § 1210.01(a) (2018). The Examining Attorney has established each element. A. The Primary Significance of AMERICAN is a Place Known Generally to the Public The Examining Attorney has established that AMERICAN means “[o]f or relating to the United States of America or its people, language, or culture.” November 22, Serial No. 87094239 4 2017 Office Action TSDR 6 (printout from “ahdictionary.com”). It is likely that the relevant potential consumers of Applicant’s coffee makers, who are ordinary American consumers, will understand that AMERICAN refers to the United States of America. See In re American Furniture Warehouse Co., 126 USPQ2d 1400, 1404 (TTAB 2018) (“we find that the primary significance of AMERICAN is geographic, the adjective form of AMERICA, a place generally known to the American public”). When we consider the mark as a whole, we find that the primary geographic significance of AMERICAN does not change. Indeed, the Examining Attorney has established that in the context of coffee makers, “press” means “[a]ny of various machines or devices that apply pressure.” November 22, 2017 Office Action TSDR 11- 12 (printout from “ahdictionary.com”). Thus, Applicant has appropriately disclaimed the descriptive term “PRESS” apart from the mark as shown. Typically, a coffee press is known as a “French press,” which is defined as a “coffeemaker with a cylindrical carafe and a plunger that is used to push the ground beans to the bottom of the carafe after the coffee has been brewed.”2 Applicant’s website makes clear that Applicant’s IT’S AMERICAN PRESS coffee makers are, essentially, a modified French press, as the site states: “Unlike a French press, with an American Press grounds are contained within our patented reusable pod for easy cleanup, and you’re actively brewing AS YOU PRESS;” and “It’s all the body without gritty ‘mud’ common to 2 ahdictionary.com/word/search.html?q=French+press. The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format or have regular fixed editions. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010). Serial No. 87094239 5 French presses.” September 10, 2016 Office Action TSDR 5-6 (printout from “itsamericanpress.com”). Applicant’s website also includes the slogan “It’s not French press, it’s American Press.” Id. at 6. Importantly, Applicant promotes its version of a coffee press as having “American” characteristics. The “Frequently Asked Questions” section of Applicant’s website includes this question and answer: Q: What’s so “American” about the American Press? A: Our name has a lot of layers to it. I’m American (Alex here, the inventor) and the American Press originated at an American university, and naturally we’re based right here in the USA. We also share a common physical form with French, and so our name shares a common form with French. Most importantly, the style of coffee the American Press produces is distinctly American, producing an Americano-like cup of “filter” coffee commonly referred to as “American style” coffee. Id. (emphasis added). Thus, PRESS is at best merely descriptive of Applicant’s goods. Turning to the proposed mark’s first word, IT’S is merely a contraction of “it” and “is,” such that it points directly to and highlights the primarily geographic term AMERICAN and the descriptive or generic term PRESS. November 22, 2017 Office Action TSDR 23 (printout from “ahdictionary.com”). In other words, IT’S is not distinctive, nor does it change the geographic significance of AMERICAN as used in Applicant’s mark. Applicant’s website reveals the American origins and connections of IT’S AMERICAN PRESS coffee makers, and the “American style” coffee the presses produce. The geographic nature of the term AMERICAN in Applicant’s mark is further highlighted by the marks’ initial word IT’S. Because the term “press” is at Serial No. 87094239 6 best merely descriptive of Applicant’s goods, it does not change the geographic meaning of Applicant’s proposed mark. In re California Pizza Kitchen Inc., 10 USPQ2d 1704, 1705 (TTAB 1988). The Examining Attorney has therefore established the first element of the test. B. The Public Would Make a Goods/Place Association We presume that the public would believe that Applicant’s goods originate in America, because Applicant is based in this country. Moreover, Applicant touts the American origin of its goods, and their ability to produce “American style” coffee. In re MCO Properties Inc., 38 USPQ2d 1154, 1155 (TTAB 1995) (“When it has been demonstrated that the primary significance of the term is geographic, and the services of the applicant are in fact rendered from the place the term names, a public association of the services with the place will be presumed.”); In re Handler Fenton Westerns, Inc., 214 USPQ 848, 850 (TTAB 1982).3 This element of the test is therefore also satisfied. C. The Source of the Goods is the Geographic Region Named in the Mark The involved application reveals that Applicant is based in this country (Ypsilanti, Michigan). As indicated, Applicant’s website also reveals that its goods were invented and are ordered from this country. Moreover, returns of Applicant’s goods are sent to Chicago, Illinois. November 22, 2017 Office Action TSDR 9. The Examining Attorney has therefore established each element of the test. 3 Applicant denies that its goods are manufactured in the United States. 11 TTABVUE 5 (Applicant’s Appeal Brief at 4). Serial No. 87094239 7 D. Applicant Has Not Rebutted the Examining Attorney’s Prima Facie Case Applicant’s argument that its proposed mark is not primarily geographically descriptive of coffee makers is based on its unsupported claims that the French press was invented by an Italian and that French presses “are rarely, if ever, made in France.” 11 TTABVUE 5 (Applicant’s Appeal Brief at 4). Therefore, according to Applicant, the term “French press” is suggestive rather than primarily merely descriptive of coffee makers, and by extension IT’S AMERICAN PRESS is suggestive of French presses, rather than primarily geographically descriptive of them or, more to the point, Applicant’s identified goods (“non-electric coffee makers”). 11 TTABVUE 2-3 (Applicant’s Appeal Brief at 1-2). More specifically, according to Applicant, IT’S AMERICAN PRESS suggests a coffee maker which is similar to but not the same as a French press, as well as the “coffee style” Applicant’s goods produce. Id. Applicant concludes that the geographic meaning of both “French press” and “American Press” is “secondary to defining two types of coffee brewers and coffee styles, and therefore neither term meets the ‘primary’ part of being primarily geographically descriptive.” Id. at 6 (Applicant’s Appeal Brief at 5).4 We disagree. Perhaps most importantly, Applicant failed to properly introduce any evidence in support of its application. Therefore, there is no evidence that United 4 Applicant appears to suggest that there are certain third-party registrations for marks which have characteristics similar to Applicant’s proposed mark, 11 TTABVUE 11 (Applicant’s Appeal Brief at 10), but failed to introduce any third-party registrations into the record. We have therefore not considered Applicant’s arguments which appear to be based on third-party registrations. Serial No. 87094239 8 States consumers perceive IT’S AMERICAN PRESS as suggesting either a type of coffee maker or a style of coffee such as an Americano, rather than a geographic location. See In re California Pizza Kitchen, 10 USPQ2d at 1705 (“However, applicant has not submitted any evidence whatsoever in support of the contention that the public would associate ‘CALIFORNIA’ with western-style or wood-fire cooking. In the absence of any evidence of a non-geographical meaning of ‘CALIFORNIA’, we conclude that the primary (and on this record the only) significance of ‘CALIFORNIA’ is its geographical significance.”). Although Applicant argued that an “Americano” is a type of coffee drink, Applicant did not submit evidence to support a finding that consumers would understand its mark IT’S AMERICAN PRESS to refer to a style of coffee rather than to a geographical location. In any event, Applicant’s mark is IT’S AMERICAN PRESS, not IT’S AMERICANO PRESS, and Applicant’s website indicates that the term “Americano” has geographic connotations (“the style of coffee the American Press produces is distinctly American, producing an Americano-like cup of ‘filter’ coffee commonly referred to as ‘American style’ coffee.”)5 Moreover, the evidence introduced by the Examining Attorney, including the dictionary definition of AMERICAN and Applicant’s website, reveals that IT’S AMERICAN PRESS refers to the geographic origin of Applicant’s goods, and the style of coffee Applicant’s coffee makers produce. Applicant’s slogan “It’s not French press, it’s American Press” highlights the geographic nature of the proposed mark, as it 5 Of course, on a different record we might reach a different result. Serial No. 87094239 9 specifically compares Applicant’s “American” goods to goods referred to as “French.” Applicant’s website even answers the question “What’s so ‘American’ about the American Press?” by highlighting the product’s and Applicant’s connections to the United States, and the “distinctly American” nature of the coffee produced by Applicant’s machine. Cf. In re Opryland USA Inc., 1 USPQ2d 1409, 1413 (TTAB 1986) (“While Nashville may have other connotations, these meanings are all so closely connected to the city of Nashville that they do not, in our opinion, obviate that term’s primary geographical sense.”). III. Conclusion In short, because IT’S AMERICAN PRESS specifically refers to the geographic origin and other geographic aspects of the goods, in a way which calls to mind a similar product named for another geographic location, the term is primarily geographically descriptive. Other American merchants of coffee makers have a “legitimate interest … in truthfully being able to use this geographic term to inform the public of the origin of their similar products.” In re Cambridge Digital Sys., 1 USPQ2d 1659, 1662 (TTAB 1986). Decision: The refusal to register Applicant’s proposed mark under Section 2(e)(2) of the Trademark Act is affirmed. Copy with citationCopy as parenthetical citation