AIT, Inc.

Trademark Trial and Appeal Board

Oct 4, 2000

No. 75323785 (T.T.A.B. Oct. 4, 2000)

Paper No. 14
10/4/00 GFR
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re AIT, Inc.
________
Serial Nos. 75/323,782; 75/323,783; 75/323,785;
75/323,786; and 75/323,787
_______
Ira S. Dorman, Esq. for AIT, Inc.
Shanna Blaustein, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______
Before Simms, Quinn and Rogers, Administrative Trademark
Judges.
Opinion by Rogers, Administrative Trademark Judge:
AIT, Inc., a corporation of Connecticut with a
business address in Connecticut, has filed applications to
register KEY LARGO LIMES, KEY WEST WAHOOS, MARCO ISLAND
MANATEES, SANIBEL STINGRAYS, and SIESTA KEY SNOOKS, each as
a trademark in International Class 25 for goods identified
as "men's, women's and children's clothing, namely, shirts,
sweatshirts, T-shirts, jackets, coats, robes, sweaters,
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/323,782-83; and 75/323,785-87
2
hats, caps, skirts, dresses, sweatpants, trousers, slacks,
shorts, sleepwear and neckwear."1
The Trademark Examining Attorney has made final a
refusal of registration on the ground that each of the
proposed marks is primarily geographically deceptively
misdescriptive of the applicant's goods and is thereby
barred from registration by Section 2(e)(3) of the
Trademark Act, 15 U.S.C. §1052(e)(3). In addition, the
Examining Attorney has, under Section 2(d) of the Trademark
Act, 15 U.S.C. §1052(d), made final a likelihood of
confusion refusal to register MARCO ISLAND MANATEES, in
view of the prior registration of MANATEE for "men's and
women's sportswear; namely, shorts, pants, slacks, shirts,
skirts, blouses, jackets and coats,"2 and a likelihood of
confusion refusal to register SANIBEL STINGRAYS, in view of
the prior registration of STING RAY for "boys swimsuits."3
Applicant has appealed from each of these refusals.
Briefs were filed; and the applicant filed but subsequently

1 Respectively, Serial Nos. 75/323,782, 75/323,783, 75/323,785,
75/323,786, and 75/323,787, all filed July 14, 1997, based on
applicant's allegation of a bona fide intention to use each mark
in commerce.
2 Registration No. 1,722,055, in International Class 25, issued
October 6, 1992. Section 8 and 15 affidavits filed and accepted.
3 Registration No. 1,358,138, in International Class 25, issued
September 3, 1985. Section 8 and 15 affidavits filed and
accepted.
Ser. No. 75/323,782-83; and 75/323,785-87
3
withdrew a request for a consolidated oral hearing. The
issues presented by the respective refusals under Section
2(e)(3) of the statute are essentially identical, and the
facts are similar. Accordingly, in the interest of
judicial economy, we consider the appeals together and
issue a single opinion.
The Section 2(e)(3) Refusals
In order to establish a prima facie case for refusal
of registration under Section 2(e)(3), the Examining
Attorney must show that the primary significance of each of
applicant's composite marks is its geographical
connotation, and that members of the public would believe
that the goods for which the mark is sought to be
registered originate in the geographic place named in the
mark when, in fact, the goods do not originate in that
geographic place. See The Institut National des
Appellations D'Origine v. Vintners International Co. Inc.,
958 F.2d 1574, 22 USPQ2d 1190, 1195 (Fed. Cir. 1992); In re
Societe Generale des Eaux Minerals de Vittel S.A., 824 F.2d
957, 3 USPQ2d 1450 (Fed. Cir. 1987); In re Loew's Theaters,
Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985); and In
re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889 (CCPA 1982).
Ser. No. 75/323,782-83; and 75/323,785-87
4
The Examining Attorney has introduced evidence
establishing that KEY LARGO, KEY WEST, MARCO ISLAND,
SANIBEL, and SIESTA KEY, are the names of specific
geographic locations in Florida.4 Indeed, applicant does
not contend otherwise, e.g., it does not contend that these
locations are obscure and relatively unknown, or that the
terms have other, non-geographic meanings or connotations.
The applicant and the Examining Attorney do disagree,
however, as to the import of the presence of an additional,
arbitrary term in each of the composite marks. The
Examining Attorney argues that, in each instance, the
presence of the arbitrary term does not create a composite
that has a non-geographic connotation. In contrast, the
applicant argues that the Examining Attorney has not
considered each mark in its entirety, in violation of the
anti-dissection rule, and gives too little weight to the
arbitrary component in each mark.
In each application, the applicant specifically
concedes "Applicant does not presently intend to
manufacture or produce the goods of the application at the

4 This evidence includes photocopies of portions of maps,
listings from Merriam Webster's Geographical Dictionary (3rd ed.),
and articles retrieved from the NEXIS computerized database of
publications.
Ser. No. 75/323,782-83; and 75/323,785-87
5
geographic location included in the mark; but certainly,
Applicant intends to sell the goods there (and elsewhere)."
As Professor McCarthy has observed, "[i]f the
composite mark contains the name of the geographic location
from which the goods do not come, a court may be more
strict in its scrutiny…." 2 J.T. McCarthy, McCarthy on
Trademarks and Unfair Competition, Section 14:11 (4th ed.
1998). This Board, in In re Wada5, adopted just such an
approach, and faulted the applicant therein for not
providing "any facts as to why, in its view, the primary
geographic significance of the mark is lost" by the
addition of even arguably arbitrary words. Wada, supra, 48
USPQ2d at 1690.
Applicant in these cases argues that it is important
to understand that each mark "was conceived as a
designation for an imaginary sports team, hypothetically
representing an island in the vicinity of Florida and being
a member of an imaginary league of teams."6 Applicant
suggests that the "imaginary nature" of these teams may
make the marks more arbitrary or fanciful. A similar

5 In re Wada, 48 USPQ2d 1689 (TTAB 1998), aff'd, 194 F.3d 1297,
52 USPQ2d 1539 (Fed. Cir. 1999).
6 Applicant concedes its marks are, or will be, printed
prominently on its goods, in the same manner that professional,
college and high school teams display their names.
Ser. No. 75/323,782-83; and 75/323,785-87
6
argument was unsuccessful by the applicant in Wada, where
"New York Ways Gallery" was argued to be a fictitious
location and therefore a fanciful or arbitrary designation,
rather than a primarily geographical designation. Wada,
supra 52 USPQ2d at 1540.
Applicant herein has pointed to no facts in support of
its conclusion that prospective consumers, if confronted
with its goods bearing the names of fictitious teams, would
consider the marks as having other than geographic
connotations. In fact, applicant presents argument that
leads to the contrary conclusion. Specifically, applicant
posits that "a person/place association, arising from a
sense of inter-island competitiveness7 and equal in strength
to that which involves a real team, could well be the
motivation for purchase" of applicant's goods. This
suggests that, if applicant's marks are perceived as
intended, consumers may purchase the goods bearing the
marks precisely because they have a geographic connotation.
Finally, although neither the Examining Attorney nor
the applicant has discussed the significance of the terms
LIMES, WAHOOS, MANATEES, STINGRAYS and SNOOKS, we note
Internet evidence made of record by the Examining Attorney

7 In two of the applications, applicant uses the word
"competition," rather than "competitiveness."
Ser. No. 75/323,782-83; and 75/323,785-87
7
in the applications, and take judicial notice of dictionary
definitions, that suggest each of these five terms will
tend to reinforce, rather than detract from, the geographic
significance of the marks.8
In the KEY LARGO LIMES application, the Examining
Attorney's Internet evidence reveals that the "Largo Cargo"
store in Key Largo features "Tropical Key Lime products."
In the KEY WEST WAHOOS application there are Internet
listings for the "Key Lime Shoppe," which offers "[l]ots of
key lime goodies and gifts for sale"; for "Key West's
Finest Gifts and Baskets," which feature, among other
items, "gourmet treats, Key lime flavors and Key West
Memorabilia"; and for "Nellie & Joe's," with a phone number
"1-800-LIME-PIE" and which promotes sales of "original Key

8 wahoo… n., pl. -hoos… a large, swift mackerel, …widespread in
warm seas, of a steel blue to greenish blue above and silver
below, often leaping from the water and occasionally schooling in
great numbers: valued as a food and game fish. The Random House
Dictionary of the English Language 2136 (2d ed. 1987).
manatee… n. any of several plant-eating aquatic mammals …of West
Indian, Floridian, and Gulf Coast waters…. The Random House
Dictionary of the English Language 1167 (2d ed. 1987).
stingray… n. any of the rays, esp. of the family Dasyatidae,
having a long, flexible tail armed near the base with a strong,
serrated bony spine with which they can inflict painful wounds.
The Random House Dictionary of the English Language 1871 (2d ed.
1987).
snook… n., pl. …snooks. 1. any basslike fish… inhabiting waters
off Florida and the West Indies and south to Brazil, valued as
food and game. The Random House Dictionary of the English
Language 1808 (2d ed. 1987).
Ser. No. 75/323,782-83; and 75/323,785-87
8
West Lime Juice" that Nellie and Joe have been bottling for
29 years.
The dictionary definitions we have noted reveal that
manatees and snooks inhabit Floridian waters and that
wahoos are a game fish inhabiting warm seas. Further, "The
Florida Keys Internet Guide," made of record by the
Examining Attorney in the KEY LARGO LIMES application,
reveals charter boat captains will take sportfishers
"searching for marlin, dolphin, wahoo or tuna just a few
miles off shore" (emphasis added).
In short, we find the terms applicant has added to
each of the geographical designations, though arbitrary in
relation to clothing items, nonetheless tend to reinforce
the geographical connotations of the marks, considered in
their entireties. We are not persuaded otherwise by
applicant's argument that there is an alliterative quality
in each mark sufficient to overcome their primarily
geographic connotations.
Turning to the requirement that, for a refusal of
registration under Section 2(e)(3), there be a goods/place
association, the Examining Attorney has submitted evidence
in each application to demonstrate that shirts and related
items of wearing apparel can be purchased in each of the
five Florida locations involved herein, and in some
Ser. No. 75/323,782-83; and 75/323,785-87
9
locations, the goods are designed and made. Applicant,
relying on the Board's Municipal Capital9 decision, argues
that it is hard to conceive of goods that are more widely
available for purchase than clothing and that it was
incumbent upon the Examining Attorney to establish
"something more" than the mere availability of the
identified goods in each of the Florida locations. The
Examining Attorney, however, is not required to "marshal
evidence that the place named is noted for or famous for
the goods recited in the application but, rather, …must
make a persuasive case that, on seeing the mark, purchasers
would be deceived into believing that the goods came from
the place named in the mark." In re Handler Fenton
Westerns, Inc., 214 USPQ 848, 849 (TTAB 1982).
We find that something more is present in these cases,
beyond the availability of clothing items for purchase in
the places named in applicant's marks, and we find that
purchasers would believe that applicant's goods come from
the places named in the marks. The Examining Attorney has
established that each of the locations named in the marks
is a known tourist destination10 and that, to borrow a

9 In re Municipal Capital Markets Corp., 51 USPQ2d 1369 (TTAB
1999).
10 See, e.g., "The Florida Keys Internet Guide" introduced by the
Examining Attorney in the KEY LARGO LIMES application; Merriam
Ser. No. 75/323,782-83; and 75/323,785-87
10
characterization of the goods, T-shirts and other such
"souvenirs for the pilgrims of popular culture"11 are widely
available in these places.
In Municipal Capital, the majority reasoned that in
the absence of evidence associating any particular type of
cuisine or food preparation with the place called
Cooperstown, restaurant diners in a restaurant bearing that
name but located elsewhere and not affiliated in any way
with the place, would not draw an association between the
restaurant and the place. We find the cases before us
distinguishable. While T-shirts and related souvenir
apparel may be sold almost everywhere, it is much more
likely that, for example, KEY LARGO LIMES emblazoned
apparel would be sold in, or would originate from, Key
Largo, Florida, than elsewhere. In short, in these cases,
we believe consumers would make the association.

Webster's Geographical Dictionary 587 (3rd ed.) in the KEY WEST
WAHOOS application; the newspaper article from The Sunday
Oklahoman (December 22, 1996) in the MARCO ISLAND MANATEES
application; the Internet sites referenced in the SANIBEL
STINGRAYS application which provide information on the island,
accommodations, and shopping; and the newspaper article from the
Sarasota Herald-Tribune (February 6, 1998) discussing the Siesta
Key fifth annual Craft Festival, featuring local and national
exhibitors.
11 Rock and Roll Hall of Fame and Museum Inc. v. Gentile
Productions, 134 F.3d 749, 45 USPQ2d 1412, 1419 (6th Cir. 1998).
Ser. No. 75/323,782-83; and 75/323,785-87
11
Applicant analogizes its goods to those of real, as
opposed to fictitious, sports teams, arguing that "it is
hardly likely that shirts bearing the BALTIMORE ORIOLES
trademark originate in Baltimore--and it is hardly likely
that any purchaser cares." Applicant asserts it is
incredible to claim that the prospective purchaser of such
goods, whether bearing the mark of a real team or one of
the fictitious teams in applicant's marks, would actually
believe that the goods originate in the places named.
Apart from the utter absence of any evidence to support
applicant's view of consumer concerns, we note that the
question is not only whether consumers would perceive that
applicant's shirts are manufactured in the places named,
but also whether they would perceive some other type of
connection or relationship with the place named. See,
e.g., In re Olin Corp., 181 USPQ 182 (TTAB 1973) ("The
'ornamentation' of a T-shirt can be of a special nature
which inherently tells the purchasing public the source of
the T-shirt, not the source of manufacture but the
secondary source. Thus, the name 'New York University'…
will serve as ornamentation on a T-shirt [but] will also
advise the purchaser that the university is the secondary
source of that shirt. It is not imaginable that Columbia
University will be the source of an N.Y.U. T-shirt. Where
Ser. No. 75/323,782-83; and 75/323,785-87
12
the shirt is distributed by other than the university the
university's name upon the shirt will indicate the
sponsorship or authorization by the university.")
In regard to applicant's goods, we believe consumers
will perceive associations with the places named. It is
sufficient for the Examining Attorney's refusal of
registration if consumers would believe the goods are
manufactured in the places named in applicant's marks; but
it is also sufficient if consumers would believe the goods
were manufactured for businesses located in these places.
We note applicant's argument that other applications
it has filed for other island-based, fictitious sports
teams' names have been approved, including at least one
such application that was approved by the Examining
Attorney who refused the applications involved herein. It
is, however, well settled that each case is to be taken on
its own merits and we are not privy to the records created
in those cases. Likewise, how this Examining Attorney has
examined other applicantions involving allegedly similar
marks, and some of the same marks, for different goods, is
not an issue before us.12

12 Throughout prosecution and briefing of these applications,
applicant has cited marks, serial numbers of applications, and
registration numbers to support its arguments. It is well
settled, however, both that mere listing of such information,
even if garnered from the Office's records, is insufficient to
Ser. No. 75/323,782-83; and 75/323,785-87
13
Finally, we also note some explanation by the
Examining Attorney that applicant does not have the option,
in these cases, of entering disclaimers of the geographic
place names, to obtain approval of its applications. To
the extent the Examining Attorney's observations on this
subject are prompted by the acceptance of disclaimers in
some of applicant's other applications, we agree with the
Examining Attorney's conclusion that this is not an option
now available to applicant. See the Wada decisions, cited
herein, for a fuller discussion of this issue.
The refusals of registration under Section 2(e)(3) of
the Trademark Act are affirmed.
The Section 2(d) Refusals
Our determination under Section 2(d), of each of the
two refusals to be reviewed, is based on an analysis of all
of the probative facts in evidence that are relevant to the
factors bearing on the likelihood of confusion issue. See
In re E.I. du Pont de Nemours and Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). In the analysis of likelihood of
confusion presented by the first case, two key
considerations are the similarity of the marks and the

place the applications or registrations in evidence. Moreover,
it is equally well settled that the Board does not take judicial
notice of such matters.
Ser. No. 75/323,782-83; and 75/323,785-87
14
legally identical nature of some of the goods; in the
second case, we focus on the similarity of the marks and
the relatedness of the goods. Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
We consider first, the Examining Attorney's refusal of
registration of MARCO ISLAND MANATEES, for "men's, women's
and children's clothing, namely, shirts, sweatshirts, T-
shirts, jackets, coats, robes, sweaters, hats, caps,
skirts, dresses, sweatpants, trousers, slacks, shorts,
sleepwear and neckwear," in view of the prior registration
of MANATEE for "men's and women's sportswear; namely,
shorts, pants, slacks, shirts, skirts, blouses, jackets and
coats."
In part, the involved goods are identical, e.g., men's
and women's shorts, slacks, shirts, skirts, jackets and
coats. With no restrictions on the channels of trade for
the respective goods, we presume that the respective goods
move in all normal channels of trade and to all usual
classes of consumers therefor. See CBS Inc. v. Morrow, 708
F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983). In short,
for our analysis, some of the goods are identical and their
channels of trade and classes of consumers are
presumptively the same. Indeed, applicant makes no
Ser. No. 75/323,782-83; and 75/323,785-87
15
arguments to the contrary. Rather, applicant focuses
solely on the marks.
The entirety of the registered mark is MANATEE and
appears to be arbitrary or fanciful. The commercial
impression created by applicant's mark is very similar,
albeit applicant's mark has the connotation of manatees
frequenting the waters of Marco Island, Florida. We do not
find this minor distinction significant, especially in view
of the fallibility of memory of the average purchaser, who
may not be able to make a side-by-side comparison of the
marks, and who tends to retain a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Consumers familiar with registrant's MANATEE mark,
used on its identified goods, if confronted with
applicant's mark used on applicant's identified goods in
the marketplace, will likely be confused as to source or
sponsorship.
Turning to the second Section 2(d) refusal, the
Examining Attorney has refused registration of SANIBEL
STINGRAYS, for "men's, women's and children's clothing,
namely, shirts, sweatshirts, T-shirts, jackets, coats,
robes, sweaters, hats, caps, skirts, dresses, sweatpants,
trousers, slacks, shorts, sleepwear and neckwear," in view
Ser. No. 75/323,782-83; and 75/323,785-87
16
of the prior registration of STING RAY for "boys
swimsuits." While applicant's identified goods do not
include boys' swimsuits, they do include a wide variety of
children's clothing, some of which, as with registrant's
swimsuits, would be considered appropriate beach attire,
e.g., T-shirts, caps, and shorts. We find some of
applicant's identified goods closely related to
registrant's swimsuits. Cf. John B. Stetson Company v.
Playboy of Miami, Inc., 154 USPQ 63 (TTAB 1967), and Ship
'N Shore Inc. v. The Stafford-Higgins Company, Inc., 129
USPQ 240 (TTAB 1961). We note also, in this regard, the
Examining Attorney's Internet evidence in the SANIBEL
STINGRAYS application, which lists the "Cricket Shop" as
featuring "a unique selection of resort wear, swimsuits,
shoes and accessories."
The entirety of the registered mark is STING RAY and
appears to be arbitrary or fanciful. The commercial
impression created by applicant's mark SANIBEL STINGRAYS is
very similar, albeit applicant's mark has the connotation
of stingrays frequenting the waters of Sanibel Island,
Florida. We do not find this minor distinction
significant, especially in view of the fallibility of
memory of the average purchaser, who may not be able to
make a side-by-side comparison of the marks, and who tends
Ser. No. 75/323,782-83; and 75/323,785-87
17
to retain a general rather than a specific impression of
trademarks. See Sealed Air Corp. v. Scott Paper Co.,
supra.
Consumers familiar with registrant's STING RAY mark,
used on its identified goods, if confronted with
applicant's mark used on applicant's identified goods in
the marketplace, will likely be confused as to source or
sponsorship.
Applicant argues that each of the two marks, MARCO
ISLAND MANATEES and SANIBEL STINGRAYS, because they are
plural, creates a sports team connotation. The argument,
however, is based solely on speculation and is without any
support in the record. Applicant also argues that each of
these marks has an alliterative quality that serves to
distinguish it from the mark in the relevant cited
registration. We are not persuaded, by either of these
arguments, that either of these Section 2(d) refusals
should be reversed.
The refusals of registration under Section 2(d) of the
statute both are affirmed.
Ser. No. 75/323,782-83; and 75/323,785-87
18
Decision: Each of the refusals of registration is
affirmed, for the reasons stated herein in regard to each.
R. L. Simms
T. J. Quinn
G. F. Rogers
Administrative Trademark
Judges, Trademark Trial
and Appeal Board