American Airlines, Inc.

Trademark Trial and Appeal Board

Jan 11, 2021

88298380 (T.T.A.B. Jan. 11, 2021)

Mailed: January 11, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
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In re American Airlines, Inc.
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Serial No. 88298380
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Eric J. Maiers and Michael R. Friedman of Greenberg Traurig, LLP
for American Airlines, Inc.

Geraldine Ingold, Trademark Examining Attorney, Law Office 121,
Richard White, Managing Attorney.
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Before Adlin, Goodman and English, Administrative Trademark Judges.
Opinion by Adlin, Administrative Trademark Judge:
Applicant American Airlines, Inc. seeks a Principal Register registration of
RENOAIR, in standard characters, for “air transport of passengers, cargo and
freight.”1 Applicant alleges that the proposed mark has acquired distinctiveness
under Section 2(f) of the Trademark Act based on Applicant’s prior Registration No.
2677849 for the same mark for “toys, namely model airplanes” (the “Prior
Registration”).

1 Application Serial No. 88298380, filed February 12, 2019 under Sections 1(b) and 2(f) of the
Trademark Act, based on an alleged intent to use the proposed mark in commerce.
This Opinion is Not a
Precedent of the TTAB
Serial No. 88298380
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The Examining Attorney refused registration under Section 2(e)(2) of the Act, 15
U.S.C. § 1052(e)(2), on the ground that the proposed mark is primarily geographically
descriptive of Applicant’s services, finding that the Prior Registration does not
establish that the mark has acquired distinctiveness for air transport. After the
refusal became final, Applicant appealed and filed a request for reconsideration
which was denied. The appeal is fully briefed.
I. Geographic Descriptiveness
Applicant claimed in its original application that its mark has acquired
distinctiveness under Section 2(f). The claim was not made in the alternative. This
was therefore a concession that the term RENOAIR is not distinctive, as a matter of
law. In fact, “an applicant’s reliance on Section 2(f) during prosecution presumes that
the mark is descriptive.” Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586
F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009). Accordingly, there is no issue with
respect to geographic descriptiveness.2
Even if geographic descriptiveness was at issue, which it is not, the record leaves
no doubt that the term is not distinctive, because: (1) the primary significance of the
term is the name of a place known generally to the public; (2) the public would make
a services/place association, i.e. believe that the services for which Applicant seeks
registration originate in that place; and (3) the source of the services is the geographic

2 Applicant’s Appeal Brief and May 22, 2020 Office Action response address only Applicant’s
Section 2(f) claim, ignoring geographic descriptiveness. Applicant argued that its mark is not
primarily geographically descriptive in its Appeal Reply Brief and October 30, 2019 Office
Action response, however.
Serial No. 88298380
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region named in the proposed 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)); TRADEMARK
MANUAL OF EXAMINING PROCEDURE (TMEP) § 1210.01(a) (Oct. 2018).
In fact, the record establishes that the primary significance of RENO is a place
generally known to the American public, specifically, a city in Nevada. April 30, 2019
Office Action TSDR 5-14. The addition of AIR to the term RENO is of no consequence
with respect to geographic descriptiveness, as it does not change the geographic
meaning of Applicant’s proposed mark, being merely descriptive of or generic for
Applicant’s identified “air transport” services. In re California Pizza Kitchen Inc., 10
USPQ2d 1704, 1705 (TTAB 1988). Furthermore, there is no evidence that combining
“Reno” and “air” into a single term without a space between the constituent words
results in the proposed mark creating a commercial impression any different from
RENO AIR with a space between the constituent words. See, e.g., In re Omaha Nat’l
Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987) (FIRSTIER merely descriptive
of banking services); In re Carlson, 91 USPQ2d 1198, 1200 (TTAB 2009)
(URBANHOUZING merely descriptive of real estate brokerage, real estate
consultation and real estate listing services); In re Cox Enters. Inc., 82 USPQ2d 1040,
1043 (TTAB 2007) (“Applicant’s mark THEATL is simply a compressed version of the
descriptive term THE ATL without a space between the two words. Without the
space, THEATL is equivalent in sound, meaning and impression to THE ATL and is
Serial No. 88298380
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equally descriptive of applicant’s goods. We disagree with applicant that the single
word creates a new meaning or a nonsensical expression or that it changes the
commercial impression of the term in any significant way.”); In re A La Vieille Russie
Inc., 60 USPQ2d 1895, 1897 n.2 (TTAB 2001) (“the compound term RUSSIANART is
as merely descriptive as its constituent words, ‘Russian Art’”); In re Gagliardi Bros.,
Inc., 218 USPQ 181, 184 (TTAB 1983) (BEEFLAKES merely descriptive of thinly
sliced beef); In re Orleans Wines, Ltd. 196 USPQ 516, 517 (TTAB 1977)
(BREADSPRED merely descriptive of jellies and jams).
We presume that the public would believe that Applicant’s services originate in
Reno, because Applicant is one of the airlines which transports passengers (and
perhaps cargo and freight) into and out of Reno-Tahoe International Airport. April
30, 2019 Office Action TSDR 7-14. In re MCO Props. 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).
This element of the test is therefore also satisfied.
Finally, Reno is the source of Applicant’s air transport services, as revealed by the
evidence establishing that Applicant serves passengers (and perhaps carries cargo
and freight) traveling to and from Reno. April 30, 2019 Office Action TSDR 7-14.
Thus, all 3 elements of the test are satisfied and there is no doubt that RENOAIR is
primarily geographically descriptive.
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II. Acquired Distinctiveness
“A claim of distinctiveness under Section 2(f) normally is not raised in a Section
1(b) application before the applicant files an amendment to allege use or a statement
of use because a claim of acquired distinctiveness, by definition, requires prior use.”
In re Olin Corp., 124 USPQ2d 1327, 1333 (TTAB 2017). However, “an applicant can
establish a prima facie case of acquired distinctiveness in the mark in an intent-to-
use application where it can show that same mark acquired distinctiveness for
sufficiently similar or related goods, and that this acquired distinctiveness will
transfer to the goods specified in the application when that mark is used in connection
with them.” Id. (emphasis added) (citing, inter alia, In re Dial-A-Mattress Operating
Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)). To establish that any
acquired distinctiveness will transfer, the relationship between the goods or services
must be close enough “that the purchasing public will perceive that the mark’s
primary significance is to identify Applicant as the source of the new goods.” Id. 1333-
34 (emphasis added). Applicant faces a “heavy burden” in attempting to establish
that distinctiveness will transfer; in fact, “the required showing for acquired
distinctiveness to ‘transfer’ to new products is a rigorous one.” Id. at 1335. See also
In re Dial-A-Mattress, 57 USPQ2d at 1812-13; In re Binion, 93 USPQ2d 1531, 1538
(TTAB 2009); In re Rogers, 53 USPQ2d 1741, 1744 (TTAB 1999).
Thus, Applicant is required to do more than establish merely that there is some
type of relationship between the goods and services. It “must show the extent to which
the goods and/or services in the intent-to-use application are related to the goods
and/or services in connection with which the mark is distinctive, and that there is a
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strong likelihood that the mark’s established trademark function will transfer to the
related goods and/or services when use in commerce occurs.” In re Binion, 93 USPQ2d
at 1538 (emphasis added) (citing In re Rogers, 53 USPQ2d at 1745)). Even in cases
where the mark is famous (and there is no evidence of fame here), “[t]he owner of a
famous mark must still establish a strong likelihood of transference.” In re Rogers,
53 USPQ2d at 1745-46.
Under Trademark Rule 2.41(a)(1)-(3), there are three ways to establish that the
mark in an intent to use application has acquired distinctiveness. See TMEP
§ 1212.09(a). Here, Applicant bases its claim of acquired distinctiveness on just one
of them: ownership of a prior Principal Register registration for the same mark for
what it alleges are “sufficiently similar” goods and services. Trademark Rule
2.41(a)(1). Specifically, Applicant relies on its Prior Registration (Registration No.
2677849 for the same mark RENOAIR for “toys, namely model airplanes”).
Before addressing the Prior Registration and what it shows, it is important to keep
in mind that prior registrations are not necessarily sufficient to establish the transfer
of acquired distinctiveness. Indeed, the applicable rule provides only that prior
registrations “may be accepted as prima facie evidence of distinctiveness” in
“appropriate cases.” Trademark Rule 2.41(a)(1) (emphasis added). In other words, a
prior registration will not be enough to establish the transfer of acquired
distinctiveness in all cases. In this case, the Prior Registration is not enough, even
though Applicant alleges that model airplanes and air transport services are related
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based on evidence that a number of airlines offer air transport services and model
airplanes under the same mark. May 22, 2020 Office Action response TSDR 59-113.
Applicant’s evidence reveals that airlines sell model airplanes as ancillary
products, on portions of their websites devoted not to air transport, but to general
consumer products bearing the airline’s mark. For example, jetBlue offers model
airplanes mounted on stands so that they can sit on, for example, a desk or table; the
model airplanes do not fly, by remote control or otherwise, and therefore they do not
transport anything. The model airplanes are sold with other general consumer
products including “drinkware” and “apparel”:

May 22, 2020 Request for Reconsideration TSDR 99. Delta’s model planes are also
not drones; they too are sold on stands and do not fly:
Serial No. 88298380
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Id. at 100. Emirates’s model planes are promoted as a “fantastic gift” for an “aviation
fan,” not as a means of transportation:

Id. at 102. Hawaiian Airlines offers model planes as part of its “Lifestyle Collection”:
Serial No. 88298380
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Id. at 104. Southwest sells its models in the “Accessories” section of its website,
referring to them as “toy planes”:

Id. at 239.
In short, the only evidence of a relationship between model airplanes and air
transport is examples such as those reproduced above, as well as third-party
registrations showing that airlines use the same marks for both air transport and
model planes. May 22, 2020 Office Action response TSDR 59-113. This is evidence of
Serial No. 88298380
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some relationship between these goods and services, in the same way that analogous
evidence at times shows some relationship between, for example, live musical
performances and t-shirts (e.g. ROLLING STONES), or beverages and golf balls (e.g.
GATORADE). However, Applicant’s showing that there is some relationship between
model airplanes and air transport services is far from “rigorous” and is not “sufficient”
to meet Applicant’s “heavy burden” of establishing that any acquired distinctiveness
for model airplanes will transfer to air transport services. See In re Olin Corp., 124
USPQ2d at 1335. See also In re Binion, 93 USPQ2d at 1538; In re Rogers, 53 USPQ2d
at 1744. Indeed, there is no evidence that Applicant’s mark has acquired
distinctiveness for model airplanes, other than the Prior Registration itself, which
did not issue under Section 2(f). While the Prior Registration issued almost 18 years
ago, that is not enough without more to show that the mark has acquired
distinctiveness for model airplanes, much less that there is a “strong likelihood” that
any acquired distinctiveness will transfer.
Applicant attempts to make much of In re TriStar History and Preservation Inc.,
2015 BL 304357 (TTAB 2015) (“TriStar”), a non-precedential 2015 decision in which
we found some relationship between model airplanes and air transport. We do not
find TriStar persuasive here.
In that case, the applicant sought registration of TWA in stylized and design forms
for air transportation of passengers and freight, but was refused based on a likelihood
of confusion with the virtually identical mark used for model airplanes. We found in
TriStar that although at “first glance” there was no relationship between the goods
Serial No. 88298380
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and services other than relating to aviation “in some manner,” the Examining
Attorney had established with evidence similar to that Applicant relies on here that
some airlines offer model airplanes. We pointed out in TriStar that ordinarily the
Examining Attorney’s evidence of this type of relationship “might not be particularly
persuasive standing alone,” but that given the “oligopolistic” nature of the airline
industry and the “small number of major airlines,” and especially the essentially
identical marks, confusion was likely in that case. Id. at * 3-4.
TriStar is not controlling here, not only because it is non-precedential, but also,
and perhaps more importantly because it answered a different question than we are
faced with here. In TriStar, we unremarkably found that when virtually identical
TWA marks were used for model airplanes on the one hand and air transport on the
other, the relationship between the goods and services was close enough that
confusion was likely. In this case, by contrast, we are not concerned with confusion
at all. The question here is whether Applicant has made a “rigorous” showing that
RENOAIR has acquired distinctiveness for model airplanes and that model airplanes
are “sufficiently similar or related” to air transport services that the rigorously shown
acquired distinctiveness will transfer to air transport services. Thus, the question in
this case, whether any acquired distinctiveness will transfer, is much different than
the question presented in TriStar, whether the relationship between the goods and
services sold under virtually identical marks was sufficient to show a likelihood of
confusion. TriStar is inapposite.
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III. Conclusion
Applicant has not met its “heavy burden” to show that any distinctiveness its
mark may have acquired for model airplanes will transfer to the air transport services
in connection with which Applicant intends to use its proposed mark.

Decision: The refusal to register on the ground that Applicant’s proposed mark
RENOAIR is primarily geographically descriptive under Section 2(e)(2) and has not
acquired distinctiveness for its identified air transport services is affirmed.