All Island Media, Inc.

Trademark Trial and Appeal Board

Dec 3, 2007

No. 78591633 (T.T.A.B. Dec. 3, 2007)

Decision mailed:
December 3, 2007
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re All Island Media, Inc.
________

Serial No. 78591633
_______

Clayton A. Prugh of Humes & Wagner, LLP for All Island Media,
Inc.

Kathleen M. Vanston, Trademark Examining Attorney, Law Office 103
(Michael Hamilton, Managing Attorney).
_______

Before Hohein, Holtzman and Wellington, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

All Island Media, Inc. has filed an application to
register on the Principal Register the term "GOLD COAST STYLE,"
in the stylized form shown below,

for "printed weekly guidebooks containing advertisements for
consumer goods and services, articles and editorial columns" in
International Class 16.1

1 Ser. No. 78591633, filed on March 21, 2005, which alleges a date of
first use anywhere of January 17, 2005 and a date of first use in
commerce of March 3, 2005.

THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Ser. No. 78591633
2
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
ground that, when used in connection with applicant's goods, the
term "GOLD COAST STYLE" is merely descriptive of them. In
addition, registration has been finally refused under Section
2(e)(2) of the Trademark Act, 15 U.S.C. §1052(e)(2), on the
ground that, as applied to applicant's goods, the term "GOLD
COAST STYLE is primarily geographically descriptive of
applicant's printed weekly guidebooks.
Applicant has appealed and briefs have been filed. We
affirm the refusals to register.
Turning first to the refusal under Section 2(e)(1) of
the Trademark Act, it is well settled that a term is considered
to be merely descriptive of goods, within the meaning of such
section, if it forthwith conveys information concerning any
significant ingredient, quality, characteristic, feature,
function, purpose, subject matter or use of the goods. See,
e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir.
1987); and In re Abcor Development Corp., 588 F.2d 811, 200 USPQ
215, 217-18 (CCPA 1978). It is not necessary that a term
describe all of the properties or functions of the goods in order
for it to be considered to be merely descriptive thereof; rather,
it is sufficient if the term describes a significant attribute or
idea about them. Moreover, whether a term is merely descriptive
is determined not in the abstract but in relation to the goods
for which registration is sought, the context in which it is
being used or is intended to be used on or in connection with
Ser. No. 78591633
3
those goods and the possible significance that the term would
have to the average purchaser of the or goods because of the
manner of such use. See In re Bright-Crest, Ltd., 204 USPQ 591,
593 (TTAB 1979). Thus, "[w]hether consumers could guess what the
product is from consideration of the mark alone is not the test."
In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Applicant, in its initial brief, contends that the term
"GOLD COAST STYLE" is suggestive rather than merely descriptive
of its goods, arguing among other things that, contrary to the
Examining Attorney's contention that such goods are "concerned,
in part, with fashion and style for the Gold Coast area of Long
Island," its printed weekly guidebooks, besides "contain[ing]
advertisements for consumer goods and services," "also contain
articles and editorial columns various topics of interest to the
individuals residing in the communities in which the publications
are distributed." Thus, according to applicant, "[i]t is
incorrect to assert that the publications are focused in any way
on fashion" or other lifestyle issues. Furthermore, contrary to
the Examining Attorney's argument that the term "GOLD COAST
STYLE" merely describes the subject matter of applicant's goods
in that its publications contain information and stories relating
to the geographic area of the north shore of Long Island known as
the "Gold Coast," applicant insists that "Gold Coast" simply
"does not refer to a specific geographic area" but instead "is
used in the Mark to suggest upscale, chic or elegant."
Consumers, applicant therefore maintains, "are not likely to make
a goods/place association" because the "guidebooks printed under
Ser. No. 78591633
4
the Mark contain articles and editorial columns on various topics
having nothing to do with any specific location."
In addition, applicant urges that even if the
designation "GOLD COAST is a nickname commonly used to identify
the north shore of Long Island" as contended by the Examining
Attorney, it is nonetheless the case that "'Gold Coast' also
designates numerous different geographic locations, not a single
location." Specifically, although notably without evidentiary
support in the record, applicant asserts that "there are many
areas throughout the world that are known as 'Gold Coast'
including at least eight (8) areas in the United States."
Applicant consequently appears to argue that because "Gold Coast"
fails to designate a single, specific geographical area, such
term lacks particularity and hence cannot be merely descriptive
of the subject matter of applicant's goods. Moreover, with
respect to the Examining Attorney's claim that the word "STYLE"
in the term "GOLD COAST STYLE" is descriptive of applicant's
goods in that it connotes "fashion" or "lifestyle," applicant
argues that "there are many other definitions of 'style' as set
forth in "[t]he full definition cited by the Examining Attorney
(and included in the attachments to the October 13, 2005 Office
Action)."2 Thus, applicant contends, the word "style" would not

2 Applicant, in its reply brief, also takes exception to the Examining
Attorney's assertion in her brief that, as shown by various third-
party registrations which she made of record, the U.S. Patent &
Trademark Office has "consistently" treated the word "style" as being
descriptive in the context of publications. Specifically, applicant
maintains that such "allegation is wrong," arguing that "[t]here are
numerous registrations issued for publications where the mark includes
the term 'style' and (i) the term is not disclaimed, (ii) the mark is
not registered pursuant to Section 2(f), and (iii) the mark is not
Ser. No. 78591633
5
be viewed as merely descriptive of its guidebooks, which as noted
previously "contain advertisements for consumer goods and
services" as well as "articles and editorial columns on various
topics of interest to the individuals residing in the communities
in which the publications are distributed." Nonetheless, even if
the terms "GOLD COAST" and "STYLE" were regarded as descriptive,
applicant "disputes the Examining Attorney's claim that the Mark
is merely the combination of descriptive terms and [that] no
imagination is required to understand the nature of the goods."
The Examining Attorney, on the other hand, takes the
position in her brief that "[a] term that describes the subject
matter of a publication is ... merely descriptive under Section
2(e)(1)," citing In re National Recreation Association, Inc., 181
F.2d 221, 85 USPQ 281, 282 (CCPA 1950) [holding the term "THE
PLAYGROUND" merely descriptive of a weekly magazine devoted to
playground supervision and activities]. In particular, she notes
that:
Geographic terms found in a mark
identifying a publication have been deemed
merely descriptive if the publication
contains information or stories relating to
the geographic area identified. For example,
the Trademark Trial and Appeal Board (TTAB)
found Chinese characters meaning ORIENTAL
DAILY NEWS to be descriptive of a publication
about countries or regions of the Orient. In
re Oriental Daily News, Inc., 230 USPQ 637
(TTAB 1986). In addition , the TTAB found
JAPAN STEEL NOTES to be descriptive for a
publication containing brief items and

registered on the Supplemental Register" as shown by copies of various
third-party registrations which are attached to its reply brief. Such
copies, however, are manifestly untimely under Trademark Rule 2.142(d)
and since, in view thereof, applicant's argument is unsupported, such
argument will not be given further consideration.

Ser. No. 78591633
6
reports pertaining to the steel industry in
Japan. In re Nippon Kokan Kabushiki Kaisha,
171 USPQ 63 (TTAB 1971). These decisions
demonstrate that geographic terms can be
merely descriptive in the context of
publications.

In the present case, the Examining Attorney contends
that, as shown by the following evidence which is of record, the
term "GOLD COAST is a nickname commonly used to identify a
geographic location, namely, the North Shore of Long Island":
"The North Shore of Long Island is the
area along Long Island's northern coast
bordering Long Island Sound. Traditionally,
the region has been the most affluent on Long
Island and among the most affluent in the New
York metropolitan area, which has earned it
the nickname "the Gold Coast." Though some
consider the North Shore to include parts of
Queens, ... the term is generally used to
refer to the Long Island coastline in Nassau
County and Suffolk County. It is often used
as a generic name for the entire northern
half of Long Island rather than just the area
immediately next to the coastline.
In contrast to what is viewed as the
more middle class and ethnic South Shore, the
North Shore has (or fosters) a reputation of
elegance and gentility. Many stately old
homes can be found there, and an "old money"
atmosphere pervades. In popular culture, it
is perhaps best known as the setting of F.
Scott Fitzgerald's 1925 novel The Great
Gatsby, which centered on the area's wealth
and the aspiration of the title character to
be accepted as a part of its society. ...."
-- http:/en.wikipedia.org/wiki/North_Shore_-
(Long_Island) [website article entitled:
"North Shore (Long Island)"];

"Definition: The Gold Coast is the name
given to a section of the North Shore
coastline of Long Island, New York. It
includes the area that stretches from Great
Neck to Huntington. During the early
twentieth century, many wealthy families
lived on the Gold Coast and built opulent
mansions there. .... F. Scott Fitzgerald
wrote about this area in his novel, The Great
Gatsby." -- http://longisland.about.com/od/-
Ser. No. 78591633
7
aboutlongisland/g/gold_coast [website article
entitled: "The Gold Coast (Long Island)"];

"Long Island's 'Gold Coast'
The North Shore of Long Island's Nassau
County is outlined by the Long Island Sound
and tells a story of opulence, beauty and
wealth to startle the imagination. Of
historic significance as well, this region is
dubbed, the 'Gold Coast.' It is open to the
public. Visiting the grand estates,
preserves and museums along the 'Gold Coast'
provides priceless insight into an elegant
past." -- http://www.licvb.com/display_info.-
fm?ID_name=press_story_ideas [website article
entitled "Press Story Ideas"]; and

"A Brief History
Originally comprising vast areas of the
North Shore of Long Island, from Great Neck
to Huntington, the Long Island Gold Coast, as
it was called, was a favorite retreat of the
rich and famous. Starting at about the turn
of the century and through the 1930's, the
North Shore was a virtual Who's Who of High
Society. From the Astors to the Vanderbilts,
this was THE place to be for some of the most
notable Americans. The mansions constructed
during that period numbered in the hundreds."
-- http://www.ligoldcoast.com/history.html
[website article entitled: "Long Island's
Gold Coast"].

Such evidence, the Examining Attorney maintains, "demonstrates
that GOLD COAST has been used to identify the North Shore of Long
Island for at least one hundred years" and that "[c]ontemporary
use of the term indicates that GOLD COAST is still used to
identify this region today." Consequently, she insists, the term
"GOLD COAST" "is a long-used and well-established nickname for
this geographic area."
As to the word "STYLE," the Examining Attorney points
to the excerpt of record from "yourdictionary.com" in which The
American Heritage Dictionary of the English Language (4th ed.
2000) defines such word, inter alia, as meaning in relevant part
Ser. No. 78591633
8
"5. a. A comfortable and elegant mode of existence: living in
style. b. A mode of living: the style of the very rich. 6. a.
The fashion of the moment, especially of dress; vogue. b. A
particular fashion: the style of the 1920s. See Synonyms at
fashion." She argues, in light thereof, that such word, "[i]n
the context of publications, ... refers to information pertaining
to fashion and lifestyle" and thus is merely descriptive of the
contents of publications directed to the subjects of fashion
and/or lifestyle as further evidenced by the copies of record of
various third-party registrations in which "the term STYLE, ...
in connection with publications, is consistently disclaimed,
registered pursuant to Section 2(f), or registered on the
Supplemental Register" when forming part of the registered marks.
In view thereof, and in consequence of the information
appearing on the specimen of record, which is a copy of the cover
of the March 3, 2005 issue of applicant's guidebook that states
that it is "100% Mailed" to "Long Island's North Shore" and touts
"HUGE SAVINGS" on various items of clothing and accessories at a
"SALE" by "McNamera's, the Examining Attorney insists that:
GOLD COAST STYLE, therefore, describes a
publication containing information about
fashion and lifestyle on the Gold Coast. The
specimen of record is the cover of the
[applicant's] weekly publication. It makes a
prominent reference to Long Island's North
Shore. This is precisely the area comprising
what is commonly known as the Gold Coast.
The cover of the publication also clearly
makes reference to items of fashion, stores
and sales. The publication is distributed
around Long Island's Gold Coast and is
clearly intended to provide fashion and
lifestyle information relevant to those
living on the Gold Coast. Therefore, the
Ser. No. 78591633
9
term describes the subject matter of the
publication.

While also recognizing that "[t]he registrability of a mark
created by combining only descriptive words depends on whether a
new and different commercial impression is created," such as when
"the mark so created imparts an incongruous meaning as used in
connection with the goods," the Examining Attorney asserts that
"[i]n the present case, the combination of the descriptive words
creates no incongruity" and, inasmuch as "no imagination is
required to understand the nature of the goods, the mark is
merely descriptive."
Upon careful consideration of the arguments presented
and evidence of record, we agree with the Examining Attorney that
the term "GOLD COAST STYLE" is merely descriptive of applicant's
"printed weekly guidebooks containing advertisements for consumer
goods and services, articles and editorial columns." In
particular, the website excerpts establish that the term "GOLD
COAST" refers to the geographic area consisting of the north
shore of Long Island, New York. That such term may also
designate other locales, as contended by applicant, is irrelevant
and immaterial inasmuch as "GOLD COAST" does not lose its
requisite particularity simply because it likewise is the name of
those specific areas as well. It is clear, moreover, that the
word "STYLE," in the context of publications such as guidebooks,
refers to and merely describes information pertaining to fashion
and/or lifestyle. Applicant's guidebooks, as the information
disclosed by the specimen of record shows, actually include
topics relating to fashion and/or lifestyle. The fact that, as
Ser. No. 78591633
10
contended by applicant, its guidebooks may also be focused on or
directed to topics other than fashion and/or lifestyle is
irrelevant and immaterial since its goods, other than being
oriented to advertisements, articles and editorials of interest
to consumers, contain no restrictions or limitations as to their
subject matter and are broadly identified so as to encompass
guidebooks which focus on matters of fashion and/or lifestyle
directed to consumers.
Plainly, when the terms "GOLD COAST" and "STYLE" are
combined, especially as displayed in the format sought to be
registered by applicant, the composite term "GOLD COAST STYLE"
immediately conveys, without the need for speculation or
conjecture, that the subject matter of applicant's guidebooks is
fashion and lifestyle information of interest to consumers living
in the area known as the Gold Coast, which in the case of
applicant's weekly publications is the north shore of Long
Island, New York. See, e.g., In re Cox Enterprises Inc., 82
USPQ2d 1040, 1043-44 (TTAB 2007) [THEATL, a recognized nickname
for the city of Atlanta, Georgia, is merely descriptive of at
least that portion of the subject matter of magazines and weekly
newspapers which relates to news, events and attractions in
Atlanta and which is directed to consumers in Atlanta]. It is
also clear that, in the context of applicant's goods, there is
nothing in the combined term "GOLD COAST STYLE" which consumers
residing along the Gold Coast of Long Island would find
incongruous, ambiguous or even suggestive, nor is there anything
which would require that they exercise any imagination,
Ser. No. 78591633
11
cogitation or mental processing, or which would necessitate the
gathering of further information, in order for the merely
descriptive significance thereof to be readily apparent. No new
and different commercial impression is created inasmuch as
nothing in the combination results in a unitary mark with a
unique, bizarre or otherwise nondescriptive meaning as applied to
applicant's goods. Rather, the constituent elements retain their
descriptive significance and their combination is itself merely
descriptive of applicant's goods in that the term "GOLD COAST
STYLE" conveys forthwith that applicant's guidebooks cover
matters on the subjects of fashion and/or lifestyle which are
pertinent to Gold Coast consumers.
Turning, next, to the remaining ground for refusal, we
note as a general proposition that in order for registration of a
mark to be properly refused on the ground that it is primarily
geographically descriptive of an applicant's goods, it is
necessary to establish (i) that the primary significance of the
mark is that of the name of a place generally known to the public
and (ii) that the public would make a goods/place association,
that is, believe that the goods which the mark is sought to be
registered originate in that place. See, e.g., In re Brouwerij
Nacional Balashi NV, 80 USPQ2d 1820, 1821 (TTAB 2006); In re JT
Tobacconists, 59 USPQ2d 1080, 1081-82 (TTAB 2001); University
Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d
1385, 1402 (TTAB 1994); and In re California Pizza Kitchen Inc.,
10 USPQ2d 1704, 1705 (TTAB 1988), citing In re Societe Generale
des Eaux Minerales de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450,
Ser. No. 78591633
12
1452 (Fed. Cir. 1987). Provided that these conditions are met,
and the goods come from the place named by or in the mark, the
mark is primarily geographically descriptive.
Moreover, where there is no genuine issue that the
geographical significance of a term is its primary significance,
and where the geographical place named by the term is neither
obscure nor remote, a public association of the goods with the
place may ordinarily be presumed from the fact that the
applicant's goods come from the geographical place named by or in
the mark. See, e.g., In re Brouwerij Nacional Balashi NV, supra;
In re JT Tobacconists, supra at 1082; In re Carolina Apparel, 48
USPQ2d 1542, 1543 (TTAB 1998); In re California Pizza Kitchen
Inc., supra; and In re Handler Fenton Westerns, Inc., 214 USPQ
848, 850 (TTAB 1982). In addition, the presence of generic or
highly descriptive terms in a mark which also contains a
primarily geographically descriptive term does not serve to
detract from the primary geographical significance of the mark as
a whole. See, e.g., In re Brouwerij Nacional Balashi NV, supra;
In re JT Tobacconists, supra at 1082; In re Carolina Apparel,
supra; In re Cambridge Digital Systems, 1 USPQ2d 1659, 1662 (TTAB
1986); and In re BankAmerica Corp., 231 USPQ 873, 875 (TTAB
1986).
However, "if ... there exists a genuine issue raised
that the placed named [by or] in the mark is so obscure or remote
that purchasers would fail to recognize the term as indicating
the geographical source of the goods," In re Societe Generale des
Eaux Minerales de Vittel S.A., supra at 3 USPQ2d 1451, the
Ser. No. 78591633
13
Examining Attorney must furnish evidence sufficient to establish
a public association of the goods with that place. Id. The
determination of such a goods/place association is not made in
the abstract, but rather in connection with the goods with which
the mark is used and from the perspective of the relevant
purchasing public for those goods. See, e.g., In re Brouwerij
Nacional Balashi NV, supra at 1822; and In re MCO Properties
Inc., 38 USPQ2d 1154, 1156 (TTAB 1995).
Applicant's contentions that the mark "GOLD COAST
STYLE" is not primarily geographically descriptive of its goods
are principally based on the asserted failure of the Examining
Attorney to establish the first element of the test for such
descriptiveness, namely, whether the primary significance of the
mark is geographic. Applicant urges in its initial brief that
"the primary significance of 'GOLD COAST' is not geographic"
because "'GOLD COAST' is used in the Mark to suggest upscale,
chic or elegant, not a specific geographic location," due
essentially to the ordinary dictionary meaning of the word "gold"
and its connotation of "precious or of high quality."
Applicant also appears to suggest that any geographical
meaning of the term "GOLD COAST" is minor, obscure, remote or
unconnected with its goods, notwithstanding its insistence that
such term "designates numerous different geographic locations,
not a single geographic location." In particular, as to the
latter, applicant maintains that "[i]t is widely known that 'Gold
Coast' is the popular name for many areas and cities around the
world that are located along the coast of a significant body or
Ser. No. 78591633
14
water or ocean and often have many wealthy residential areas."
According to applicant, "[t]he most notable 'Gold Coast' is a
section of Queensland, Australia," although there are also at
least eight areas in the United States which are so known,
including--applicant admits--"the area on the north shore of Long
Island, New York." However, as indicated earlier in the
discussion herein of mere descriptiveness, with the exception of
proof that the north shore of Long Island, New York is and has
for many years been known as the "Gold Coast," applicant's
assertions regarding other locations known as the "Gold Coast"
are notably without evidentiary support in the record. Instead,
as support for its position that such term is not primarily
geographical, applicant refers to a list of various third-party
registrations for marks which consist of or include the term
"GOLD COAST" (or its asserted foreign equivalent, "COTE D'OR"),
covering various goods and services other than guidebooks, in
which, according to applicant "the exclusive right to use 'Gold
Coast' apart from the marks was not disclaimed in any of the
registrations ... and none of the marks were registered based
upon a showing of acquired distinctiveness under Section 2(f)."
With respect to the second element of the test for
primary geographical descriptiveness, that is, whether the public
would make a goods/place association by believing that the goods
which the mark is sought to be registered originate in the place
named by the mark, applicant maintains that such is unlikely
inasmuch as "the guidebooks printed under the Mark contain
articles and editorial columns on various topics having nothing
Ser. No. 78591633
15
to do with any specific location." Finally, as to the third
element which must be satisfied in order to make a showing of
primary geographical descriptiveness, it is noted that applicant
makes no argument that its goods do not come from the "Gold
Coast" or north shore area of Long Island, New York. In fact,
nowhere in the prosecution history of its application is there
any indication that its guidebooks do not originate in such area.
In particular, we note in this regard that nowhere in its reply
brief does applicant specifically address the following
contentions by the Examining Attorney in her brief:
The question of whether a term is
primarily geographically descriptive under
§2(e)(2) ... depends on whether or not a mark
identifies the place from which the goods ...
originate. Goods ... may be said to
"originate" from a geographic location if,
for example, they are manufactured, produced
or sold there. See Fred Hayman Beverly Hills
Inc. v. Jacques Bernier Inc., 38 USPQ2d 1691
(TTAB 1996) ([although] RODEO DRIVE held
primarily geographically deceptively
misdescriptive of [applicant's] perfume, ...
opposer's evidence showed that a significant
number of Rodeo Drive retailers sell
"prestige" fragrances, and that the public
would be likely to make the requisite
goods/place association between perfume and
Rodeo Drive).

As has been noted above, the specimen of
record indicates that the goods [in this
case] are sold or distributed in the Gold
Coast area. This means that it is
appropriate to state that the goods
"originate" from the geographic location
named in the mark. ....

Accordingly, we take it as established for purposes of
this appeal that applicant's guidebooks come from or originate in
the area of the north shore of Long Island, New York which is
known as the Gold Coast in that at a minimum, as shown by the
Ser. No. 78591633
16
specimen of record, they are distributed by applicant by mail in
such location. Moreover, as to the two remaining elements of the
test for primary geographical descriptiveness, we agree with the
Examining Attorney that such have been satisfied on the record
herein. Specifically, contrary to applicant's apparent argument,
the record shows that the term "GOLD COAST" in applicant's mark
identifies a place which is generally known to the relevant
purchasing public and, in fact, would be well known to consumers
for applicant's guidebooks. See, e.g., In re MCO Properties
Inc., 38 USPQ2d 1154, 1156 (TTAB 1995) [whether a place is
generally known is determined not in the abstract or with
reference to the nationwide purchasing public, but rather with
reference to the relevant purchasing public for the goods in
question]. While applicant principally argues that such term is
not primarily geographical because it assertedly designates a
variety of locations, we concur with the Examining Attorney that,
even if the record contained supporting evidence of the existence
of such other locations, that would not mean that "Gold Coast" is
not primarily a geographical term. Rather, as persuasively
pointed out by the Examining Attorney in her brief:
The fact that the mark identifies more than
one geographic location does not necessarily
detract from the term's primary geographic
significance. See, e.g., In re Loew's
Theatres, Inc., 769 F.2d 764, 226 USPQ 865
(Fed. Cir. 1985) (DURANGO held primarily
geographically deceptively misdescriptive of
chewing tobacco not grown in Durango, Mexico,
where the evidence of record showed that
tobacco is a crop produced and marketed in
that area, even though there is more than one
place named Durango); In re Cambridge Digital
Systems, 1 USPQ2d 1659 ... (TTAB 1986)
(CAMBRIDGE DIGITAL and design held primarily
Ser. No. 78591633
17
geographically descriptive of computer
systems and parts thereof, where applicant's
place of business is Cambridge,
Massachusetts, even though there is more than
one Cambridge). In this instance, while GOLD
COAST may be used to identify more than one
location, it is clear that this term has been
used consistently, from at least the turn of
the twentieth century though [sic] the
present, to identify the North Shore of Long
Island. The fact that the term is used to
identify other geographic regions does not
detract from its geographic descriptiveness
in relation to the North Shore of Long
Island.

Furthermore, the record clearly shows that the term
"Gold Coast," as a designation or nickname for the north shore of
Long Island, is not minor, obscure, remote nor otherwise
unconnected with applicant's goods and is, instead, "widely
known" as applicant essentially concedes. As to its argument
that "the primary significance of 'GOLD COAST' is not geographic"
because "'GOLD COAST' is used in the Mark to suggest upscale,
chic or elegant, not a specific geographic location," it is
apparent on this record that any such meaning which may be
associated with the mark is due to the fact that the term "Gold
Coast" evokes the very geographic area of the north shore of Long
Island which, particularly in its heyday earlier in the twentieth
century but still largely continuing today, was and is known for
its affluence and tony reputation due to its many stately old
homes and an "'old money' atmosphere" of opulence, elegance and
gentility. Such an image, however, simply does not detract or
preclude the primary significance of the term "Gold Coast" from
being geographical. See, e.g., Fred Hayman Beverly Hills Inc. v.
Jacques Bernier Inc., supra at 1695 [while recognizing that term
Ser. No. 78591633
18
"Rodeo Drive" "evokes images of affluence and high-fashion" and
that "[i]t is the Rodeo Drive lifestyle which applicant has
sought to capture with its perfume and which has been useful to
Rodeo Drive retailers in promoting their fragrances," the Board
found that "the evidence of record establishes that the primary
meaning of Rodeo Drive is geographical"].
In addition, although not argued by applicant, we
nonetheless agree with the Examining Attorney that the presence
of the word "STYLE" in applicant's "GOLD COAST STYLE" mark "does
not obviate a determination of geographic descriptiveness." As
indicated earlier in this opinion with respect to the discussion
of mere descriptiveness, the evidence of record shows that the
word "style" in the context of applicant's guidebooks refers to
fashion or lifestyle and thus is merely descriptive of the
subject matter of applicant's goods. The addition of such word
consequently does not detract from or negate the primary
significance of applicant's mark, which is that of the name of a
place generally known to the public as the Gold Coast of Long
Island, New York. See, e.g., In re South Park Cigar Inc., 82
USPQ2d 1507, 1513 (TTAB 2007) [holding that presence of laudatory
term "GOLD" in mark "YBOR GOLD" for cigars and tobacco does not
preclude a finding that primary significance of both the term
"YBOR" and mark as a whole is geographical]; In re JT
Tobacconists, supra at 1083 [finding that as to mark "MINNESOTA
CIGAR COMPANY," the presence "of the generic terminology 'CIGAR
COMPANY' for an entity in the business of selling cigars and
related cigar products such as cigar cases and humidors does not
Ser. No. 78591633
19
detract from or otherwise alter the fact that the primary
significance of the mark as a whole is geographical"]; and In re
Bacardi & Co. Ltd., 48 USPQ2d 1031, 1034 (TTAB 1997) [holding
that the terms "SELECT," "CLASICO," "OLD," "PRIMO" and "CLIPPER"
in, respectively, the marks "HAVANA SELECT," "HAVANA CLASICO,"
"OLD HAVANA," HAVANA PRIMO" and "HAVANA CLIPPER," all for rum,
"do not detract from the primary geographic significance of ...
the proposed composite marks"].
We are not persuaded, moreover, that we should find
that the primary significance of the mark "GOLD COAST STYLE" is
nevertheless not geographical by applicant's reliance on a list
of certain third-party registrations for marks consisting of or
including the term "GOLD COAST" (or its asserted foreign
equivalent, "COTE D'OR") which cover various goods and services
other than guidebooks simply because, according to applicant "the
exclusive right to use 'Gold Coast' apart from the marks was not
disclaimed in any of the registrations ... and none of the marks
were registered based upon a showing of acquired distinctiveness
under Section 2(f)." Although, as a counter thereto, we observe
that the Examining Attorney points out in her brief that she has
made of record copies of several other third-party registrations
for marks, covering various goods and services other than
guidebooks and including the term "GOLD COAST," in which "the
term GOLD COAST has been disclaimed, registered pursuant to
Section 2(f), or registered on the Supplemental Register" and
therefore assertedly "demonstrate that GOLD COAST has been found
to be a geographically descriptive term in the context of a
Ser. No. 78591633
20
variety of goods and services," suffice it to say that a
consistent pattern or practice on the part of the U.S. Patent and
Trademark Office with respect to the treatment of such marks and
those referred to by applicant is not discernable.
Instead, as the Examining Attorney also states in her
brief:
Third-party registrations are not
conclusive on the question of geographic
descriptiveness. Each case must be
considered on its own merits. A proposed
mark that is [primarily] geographically
descriptive does not become registrable
simply because other similar marks appear on
the register. See In re Scholastic Testing
Service, Inc., 196 USPQ 517 (TTAB 1977); TMEP
§1209.03(a).

Consequently, while applicant faults the Examining Attorney in
its reply brief for allegedly having given "little attention to
the numerous registrations cited by Applicant ... for marks
including Gold Coast ... in which the exclusive right to use
'Gold Coast' apart from the marks was not disclaimed and none of
the marks were registered based upon a showing of acquired
distinctiveness under Section 2(f)," it is still the case, as
noted by our principal reviewing court in In re Nett Designs
Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001), that
"[e]ven if some prior registrations had some characteristics
similar to [applicant's] application, the ... allowance of such
prior registrations does not bind the Board or this court." See
also, In re Broyhill Furniture Industries Inc., 60 USPQ2d 1511,
1514 (TTAB 2001); and In re Pennzoil Products Co., 20 USQP2d
1753, 1758 (TTAB 1991). Such registrations accordingly do not
assist applicant in registering its mark.
Ser. No. 78591633
21
Finally, with respect to whether the relevant public is
likely to make a goods/place association, it would appear that
inasmuch as the geographical significance of applicant's "GOLD
COAST STYLE" mark is its primary significance and the
geographical place named by the term "GOLD COAST" is neither
obscure nor remote, a public association of applicant's
guidebooks with the Gold Coast of Long Island could and should be
presumed just from the fact that the applicant's goods come from
the geographical place named in the mark. Nonetheless, the
Examining Attorney goes on to argue in her brief, and we concur,
that the specimen of record "also establish[es] the goods/place
association," contending that (citations omitted):
Applicant's specimen of record consists of
the cover of a publication. It makes a
prominent reference to Long Island's North
Shore. It is clear from the cover that the
publication is designed for and relevant to
those living on Long Island's Gold Coast.
.... Purchasers are likely to believe the
goods originate in that geographic location
because the specimen indicates that the goods
are provided there. ....

Applicant's assertion that the relevant public would not make a
goods/place association because "the guidebooks printed under the
Mark contain articles and editorial columns on various topics
having nothing to do with any specific location," is without
merit inasmuch as it is clear, as observed in the earlier
discussion herein of mere descriptiveness, that the subject
matter of its publications covers matters on the subjects of
fashion and/or lifestyle which are pertinent to Gold Coast
consumers.
Ser. No. 78591633
22
We accordingly find that consumers are likely to
believe that applicant's guidebooks, when marketed under the mark
"GOLD COAST STYLE," come from or originate in the area of the
north shore of Long Island, New York known as the "Gold Coast"
and that such mark is therefore primarily geographically
descriptive of applicant's goods.
Decision: The refusals under Sections 2(e)(1) and
2(e)(2) are affirmed.