Argent Media Group, LLC

Trademark Trial and Appeal Board

Apr 6, 2021

88780676 (T.T.A.B. Apr. 6, 2021)

Mailed: April 6, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board
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In re Argent Media Group, LLC
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Serial No. 88780676
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Timothy J. Zarley of Zarley Law Firm, P.L.C.,
for Argent Media Group, LLC.
James Hill, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
————
Before Wolfson, Larkin, and Johnson,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Argent Media Group, LLC (“Applicant”) seeks registration on the Principal
Register of the standard character mark MALIBU SUPPER CLUB (“SUPPER
CLUB” disclaimed) for “Restaurant and bar services” in International Class 43.1

1 Application Serial No. 88780676, filed on January 31, 2020, based on Applicant’s allegation
of a 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. 88780676
2
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(e)(2) of the Trademark Act, 15 U.S.C. § 1052(e)(2), on the ground that
the mark is primarily geographically descriptive of the identified services.
When the refusal was made final, Applicant appealed and requested
reconsideration. The Examining Attorney denied the request for reconsideration, and
the appeal was resumed. For the reasons explained below, we affirm the refusal to
register.2
I. Applicable Law
In order for registration to be refused under Section 2(e)(2) of the Trademark Act
on the ground that the mark is primarily geographically descriptive of the goods or
services, it must be established that:
1. The primary significance of the term in the mark sought to be
registered is the name of a place generally known to the public;

2. The services originate in the place named in the mark; and
3. The public would make an association between the goods or
services and the place named in the mark by believing that the
goods or services originate in that place.

In re Newbridge Cutlery Co., 776 F.3d 854, 113 USPQ2d 1445, 1448 (Fed. Cir. 2015);
see also In re Societe Generale des Eaux Minerals de Vittel S.A., 824 F.2d 957,
3 USPQ2d 1450, 1451-52 (Fed. Cir. 1987); Spiritline Cruises LLC v. Tour Mgmt.

2 All citations in this opinion to the appeal record are to TTABVUE, the docket history system
for the Trademark Trial and Appeal Board. Before the TTABVUE designation is the docket
entry number; and after this designation are the page references, if applicable. Citations to
the prosecution history of the application are to pages from the Trademark Status & Docu-
ment Retrieval (“TSDR”) database of the United States Patent and Trademark Office
(“USPTO”).
Serial No. 88780676
3
Servs., Inc., 2020 USPQ2d 48324, *5 (TTAB 2020). The third inquiry, the services-
place association, can be presumed when the services do in fact originate in the place
named in the mark. Hollywood Lawyers Online, 110 USPQ2d 1852, 1853 (TTAB
2014). Finally, “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.” Id. at 1853-54
(quoting In re JT Tobacconists, 59 USPQ2d 1080, 1082 (TTAB 2001) (MINNESOTA
CIGAR COMPANY primarily geographically descriptive of cigars from Minnesota)).
II. Evidence and Arguments
In support of the Section 2(e)(2) refusal, the Examining Attorney submitted the
following evidence:
A. Dictionary definitions
 Columbia Gazetteer of the World - Malibu is a “city in Los Angeles
county.” February 12, 2020, Office Action, TSDR 2;
 Lexico - Malibu is “a resort on the Pacific Ocean coast of southern
California, west of Los Angeles.” Id., TSDR 3;
 American Heritage Dictionary of the English Language – Malibu is
“a district of Los Angeles, California, on Santa Monica Bay. It is a
fashionable resort and residential area.” September 29, 2020, Denial
of Request for Reconsideration, TSDR 3;
 Merriam-Webster – Malibu is a “seaside city west of Los Angeles pop-
ulation 12,965.” Id. at TSDR 4;
 Your Dictionary – Malibu is a “city in SW Calif., on the Pacific . . . a
district of Los Angeles, California, on Santa Monica Bay. It is a fash-
ionable resort and residential area.” Id. at TSDR 5.
B. Screenshots from third-party websites referring to “Malibu” as a dining
destination, attached to the March 27, 2020, Office Action. Examples include:
 Eater Los Angeles: “Malibu’s Top 15 Restaurants, Summer 2018 –
Serial No. 88780676
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Where to eat near the beach in Malibu, Santa Monica, and Pacific
Palisades.” At https://la.eater.com, TSDR 2;
 Culture Trip: “The 8 Best Restaurants in Malibu.” At https://thec-
ulturetrip.com, TSDR 4;
 The Travel: “20 Go-To Restaurants In Malibu (That Are Actually Af-
fordable) – From seafood and pizza on the coast to fine dining in the
Santa Monica Hills, this list will help you navigate the dining expe-
riences of scenic Malibu.” At https://www.thetravel.com, TSDR 5.
C. Screenshots from third-party websites showing that “supper club” is
commonly used to refer to restaurants, eateries, and bars, attached to the
March 27, 2020, Office Action. Examples include:
 Arthur Henry’s Supper Club & Ruby Room – “An evening Bar and
Restaurant Lounge hotspot unlike any other . . . in Sacramento.” At
http://arthurhenrys.net, TSDR 9;
 Feinstein’s at Vitello’s – “. . . one of Los Angeles’s premier supper-
clubs.” At https://www.feinsteainsatvitellos.com, TSDR 12;
 Bernie’s Lounge and Supper Club – “Re-live the atmosphere of what
dining used to be. Stop by for martinis, supper and a swingin’ lounge
act.” At https://www.visitgreaterpalmsprings.com, TSDR 20.
D. Eleven third-party registrations including “MALIBU” registered under
Trademark Act Section 2(f) or with the term “Malibu” disclaimed. March 27,
2020, Denial of Request for Reconsideration, TSDR 21-50.
Based on the above, the Examining Attorney argues that MALIBU is “a clear ref-
erence to the resort city on the Pacific Ocean coast of southern California, west of Los
Angeles in Los Angeles County, California” and that “this term is routinely used in
the restaurant and bar industry . . . to refer to such services originating in the geo-
graphic location in question.” Examining Attorney Brief, 8 TTABVUE 4. The Exam-
ining Attorney further argues that the record shows “that applicant’s restaurant and
bar services will be provided at a SUPPER CLUB in MALIBU, i.e., a MALIBU
SUPPER CLUB,” and the services-place association is “appropriately presumed.” 8
Serial No. 88780676
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TTABVUE 6-7. “Thus, because MALIBU is primarily geographically descriptive of
the origin of the services, and the additional wording in the mark, SUPPER CLUB,
is merely descriptive of the services and does not overcome the geographic descrip-
tiveness of the mark, the entire mark is primarily geographically descriptive of the
services” 8 TTABVUE 10.
Applicant provided the following evidence:
A. Excerpt from Dictionary.com describing MALIBU as “an exclusive and ritzy
community,” a “glitzy beach town,” and stating that “Malibu more generally evokes
luxury and relaxation, whether achieved with Malibu liqueur, driving a Chevy
Malibu, or cruising down the beaches of Malibu, CA.” At dictionary.com/e/pop-cul-
ture/malibu/; September 28, 2020, Request for Reconsideration, TSDR 2.
B. Excerpt from Wikipedia about “Malibu, California.” At https://en.wikipedia.org:
March 23, 2020, Response to Office Action, TSDR 2-10.
C. Eleven third-party registrations for marks comprising MALIBU.3 March 23,
2020, Response to Office Action, TSDR 17-29.4
In challenging the refusals, Applicant maintains that “in popular culture, the term
is not primarily a geographic location, but rather a term that indicates luxury and
relaxation.” 6 TTABVUE 3. Although Applicant agrees that the third-party
restaurants “are located in the city of Malibu,” Applicant argues that the evidence
submitted does not compel the conclusion that the term MALIBU is being used to

3 Printouts for 12 registrations were included but one has been cancelled. Cancelled or ex-
pired third-party registrations have no probative value other than as evidence that the reg-
istrations were issued. See Action Temp. Servs. Inc. v. Labor Force Inc., 870 F.2d 1563, 10
USPQ2d 1307, 1309 (Fed. Cir. 1989).
4 Applicant also included a printout of a third-party application. Third-party applications,
whether active or abandoned, are evidence only that the applications were filed and have no
probative value with regard to the issue of geographic descriptiveness. In re Mr. Recipe, LLC,
118 USPQ2d 1084, 1089 (TTAB 2016); see also In re Toshiba Med. Sys. Corp., 91 USPQ2d
1266, 1270 n.8 (TTAB 2009).
Serial No. 88780676
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describe the location of the business as opposed to describing “luxury and relaxation.”
Id. Finally, Applicant argues it is improper to presume that purchasers would be
likely to make a services-place association, because “there is a genuine issue as to
whether the primary significance of the mark is geographical, and therefore, reliance
upon the presumption is improper.” Id.
III. Analysis
Geographic descriptiveness, like descriptiveness generally, “must be evaluated in
relation to the particular goods [or services] for which registration is sought, the
context in which [the mark] is being used, and the possible significance that the term
would have to the average purchaser of the goods [or services] because of the manner
of its use or intended use.” In re Chamber of Commerce of the U.S.A., 675 F.3d 1297,
102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citation omitted); In re Hollywood Lawyers
Online, 110 USPQ2d at 1857 (holding HOLLYWOOD LAWYERS ONLINE primarily
geographically descriptive of attorney referrals, online business information, and an
online business directory).
Here, the evidence of record clearly establishes the following: (1) the term
MALIBU in the applied-for mark is a generally known geographic location; (2) the
phrase “supper club” is commonly used by restaurants and bars to identify a type of
restaurant; (3) Applicant’s services will originate in Malibu;5 and (4) relevant
consumers will immediately make a connection between the place located in the

5 On February 12, 2020, Applicant’s counsel confirmed by email that “[Applicant] will be lo-
cated in Malibu.” See March 27, 2020 Office Action, TSDR 8.
Serial No. 88780676
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mark, i.e., Malibu, California, and the services offered by Applicant, namely,
restaurant and bar services.
Applicant argues that the term “Malibu” will be seen by consumers not primarily
as a place, but rather as a general reference to luxury and relaxation – a “[glitzy] area
that Hollywood movie stars flock to.” 6 TTABVUE 3. Applicant’s reliance on the “Pop
Culture Dictionary” excerpt from Dictionary.com for this proposition is misplaced. A
fuller reference to the passage shows that the primary significance of “Malibu,” even
in pop culture, is to the geographic location. The excerpt begins: “Malibu variously
refers to a wealthy beach city near Los Angeles, a coconut-flavored liqueur made with
rum, and a sedan made by Chevrolet.” It explains: “This is not meant to be a formal
definition of Malibu like most terms we define on Dictionary.com, but is rather an
informal word summary that hopefully touches upon the key aspects of the meaning
and usage of Malibu that will help our users expand their word mastery.” Denial of
Request for Reconsideration, TSDR 2.
In the context in which it is being used by Applicant, that is, as a modifier of the
descriptive wording “supper club,” the average purchaser of restaurant and bar
services will immediately perceive MALIBU as designating the location of Applicant’s
establishment. In fact, the additional wording, SUPPER CLUB, reinforces this
immediate perception, as it describes the applied-for services as being rendered at a
specific location. Where, as here, the most prominent meaning or significance of a
mark is geographic for the services in the application, the fact that the mark may
have other meanings in other contexts does not alter its geographic significance in
Serial No. 88780676
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the context of the application. See, e.g., In re Opryland USA Inc., 1 USPQ2d 1409,
1412-13 (TTAB 1986) (holding the mark THE NASHVILLE NETWORK primarily
geographically descriptive of television program production and distribution services
when finding that the primary significance of the term referred to Nashville,
Tennessee and not that of a style of music); In re Cookie Kitchen, Inc., 228 USPQ 873,
874 (TTAB 1986) (noting that where MANHATTAN refers to a type of cocktail and to
a geographic location, having an alternative meaning does not alter the mark’s
primary geographic significance in the context of the goods in the application); In re
Jack’s Hi-Grade Foods, Inc., 226 USPQ 1028, 1029 (TTAB 1985) (noting that where
NEAPOLITAN refers to a type of ice cream and also means “pertaining to Naples,
Italy,” having an alternative meaning does not alter the mark’s primary geographic
significance in the context of the goods in the application).
The third-party registrations submitted by Applicant do not prove otherwise. Only
Reg. No. 4599625 covers services; it is for the mark MALIBU CLOSET for on-line
retail store services featuring, inter alia, clothing. Notably, “MALIBU” has been
disclaimed, undercutting Applicant’s reliance on the registration. Reg. No. 3643203
for MALIBU SHIRTS and design for clothing also includes a disclaimer of “Malibu
shirts.”
All but one of the remainder of the registrations fall into two groups. The first
group is for entirely unrelated goods: Reg. No. 4116906 for MALIBU for “accessories
and replacement parts for electric lighting fixtures” and similar goods; Reg. No.
4716613 for MALIBU for “home security systems” and similar goods (both
Serial No. 88780676
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registrations are owned by the same entity); Reg. No. 5315432 for MALIBU PILL
(“pill” disclaimed) for “hormones for medical purposes;” and Reg. No. 5231133 for
MALIBU TEETH WHITENING (“teeth whitening” disclaimed) for “Teeth whitening
services.” These registrations are not probative of whether MALIBU SUPPER CLUB
is primarily geographically descriptive in association with restaurant and bar
services.
The second group of marks contain additional distinctive wording, making them
not analogous to Applicant’s mark: Reg. No. 5160414 for MALIBU PRINCESS for
children’s dresses; Reg. No. 5050002 for MALIBU GIRLS (“girls” disclaimed) for chil-
dren’s dresses (both owned by the same entity); Reg. No. 4962854 for MALIBU ROAD
for clothing and Reg. No. 5125013 for MALIBU BEACH BASICS (“Beach” and “Ba-
sics” disclaimed) for, inter alia, handbags.
Finally, Reg. No. 4891172 is for the mark MALIBU for alcoholic and non-alcoholic
beverages. To the extent an argument could be made that these goods are related to
Applicant’s services, nonetheless, a single registration clearly is insufficient to over-
come the other evidence of record. Moreover, our determination of whether MALIBU
SUPPER CLUB is primarily geographically descriptive must be based upon the ser-
vices recited in the application before us. “[T]hat a term may be descriptive of certain
types of goods [or services] does not establish that it is likewise descriptive of other
types of goods, even if the goods are closely related (e.g. hats and boots).” In re Stroh
Brewery Co., 34 USPQ2d 1796, 1797 (TTAB 1995).
As none of the marks featured in the above-referenced registrations is analogous
Serial No. 88780676
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to the applied-for mark, the third-party registrations submitted by Applicant do not
change the result in this case. See, e.g., In re Cordua Rests., Inc., 823 F.3d 594, 118
USPQ2d 1632, 1635 (Fed. Cir. 2016) (“The PTO is required to examine all trademark
applications for compliance with each and every eligibility requirement, including
non-genericness, even if the PTO earlier mistakenly registered a similar or identical
mark suffering the same defect.”); In re Shinnecock Smoke Shop, 571 F.3d 1171, 91
USPQ2d 1218, 1221 (Fed. Cir. 2009) (“Even if all of the third-party registrations
should have been refused registration under section 1052(a), such errors do not bind
the USPTO to improperly register Applicant’s marks.”) (citation omitted); In re
The Boulevard Entm’t, Inc., 334 F.3d 1336, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)
(“The fact that, whether because of administrative error or otherwise, some marks
have been registered even though they may be in violation of the governing statutory
standard does not mean that the agency must forgo applying that standard in all
other cases.”).
We also note that the Examining Attorney submitted eleven third-party
registrations including “MALIBU” registered under Trademark Act Section 2(f) or
with the term “Malibu” disclaimed. March 27, 2020, Office Action, TSDR 21-50.
Several of these are in connection with services identical to those offered by
Applicant, for example:
 Reg. No. 3722396 for the mark MALIBU PIER (“Pier” disclaimed), reg-
istered with a Section 2(f) statement as to the entire mark for, inter
alia, “restaurant services.” Id., TSDR 24.
 Reg. No. 3383412 for the mark CARBON BEACH CLUB MALIBU
BEACH INN (“Carbon beach” and “Club” disclaimed), registered with
Serial No. 88780676
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a Section 2(f) statement as to “Malibu Beach Inn” for “restaurant ser-
vices.” Id., TSDR 32.
 Reg. No. 4425978 for the mark MALIBU FARM (“Malibu” disclaimed)
for “catering and restaurant services.” Id., TSDR 35.
 Reg. No. 5231132 for the mark REEL INN MALIBU (“Malibu” dis-
claimed) for “restaurant services.” Id., TSDR 40.
 Reg. No. 5387707 for the mark MALIBU MOMENT (“Malibu” dis-
claimed) for “hotel and restaurant services.” Id., TSDR 46.
Third-party registrations featuring services that are the same as or similar to
Applicant’s services are probative evidence on the issue of geographic descriptiveness
where the relevant word or term is disclaimed, registered under Trademark Act
Section 2(f) based on acquired distinctiveness, or registered on the Supplemental
Register. See Inst. Nat’l des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d
1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992); In re Box Solutions Corp., 79 USPQ2d
1953, 1955 (TTAB 2006); In re Finisar Corp., 78 USPQ2d 1618, 1621 (TTAB 2006).
In light of this evidence, we find that the mark MALIBU SUPPER CLUB is
primarily geographically descriptive of Applicant’s services, namely, that Applicant
intends to operate a supper club located in Malibu, California.
IV. Conclusion
We have carefully considered all arguments and evidence of record. We find that
Applicant’s mark MALIBU SUPPER CLUB identifies a well-known geographic
location from where Applicant’s services originate and that purchasers would make
a services-place association between Applicant’s services and the place named in the
mark. The addition of the descriptive, if not generic, phrase “supper club” in the mark
does not detract from the mark’s primary significance as being geographically
Serial No. 88780676
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descriptive. Because the elements of the Section 2(e)(2) refusal have been established,
we find that the Examining Attorney has demonstrated that Applicant’s mark is
primarily geographically descriptive of Applicant’s identified services.
Decision: The refusal to register Applicant’s mark MALIBU SUPPER CLUB
under Section 2(e)(2) of the Trademark Act is affirmed.