The Wayward Studio, LLC

Trademark Trial and Appeal Board

Feb 27, 2020

87094239 (T.T.A.B. Feb. 27, 2020)

Mailed: February 27, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
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In re The Wayward Studio, LLC
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Serial No. 87094239
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The Wayward Studio, LLC, pro se.

Barbara A. Gaynor, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
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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
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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
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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
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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
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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
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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).
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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
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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
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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.