Beaverton Foods, Inc.

Trademark Trial and Appeal Board

Aug 13, 2007

No. 76624790 (T.T.A.B. Aug. 13, 2007)

Oral Hearing: Mailed:
February 27, 2007 August 13, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Beaverton Foods, Inc.
________

Serial No. 76624790
_______

Kenneth S. Klarquist of Klarquist Sparkman, LLP, for
Beaverton Foods, Inc.

David Taylor, Trademark Examining Attorney, Law Office 112
(Angela Wilson, Managing Attorney).
_______

Before Hohein, Grendel and Kuhlke, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Beaverton Foods, Inc. has filed an application to
register the mark NAPA VALLEY MUSTARD CO. (in standard
character form) on the Principal Register for “condiments,
namely mustard” in International Class 30.1
The examining attorney initially refused registration
on the ground that the mark is either primarily

1 Application Serial No. 76624790, filed December 17, 2004, under
Section 1(a) of the Trademark Act, 15 U.S.C. §1051(a), alleging
1983 as the date of first use of the mark anywhere and in
commerce.
THIS OPINION IS A
PRECEDENT OF THE TTAB
Serial No. 76624790
2
geographically descriptive under Trademark Act Section
2(e)(2), 15 U.S.C. §1052(e)(2), or primarily geographically
deceptively misdescriptive under Trademark Act Section
2(e)(3), 15 U.S.C. §1052(e)(3), and requested information
as to where the goods originate. Applicant responded by
submitting a declaration attesting that the mark had become
distinctive, under Section 2(f), 15 U.S.C. §1052(f), prior
to December 8, 1993, the date of enactment of the North
American Free Trade Agreement (NAFTA) Implementation Act,
by reason of substantially exclusive and continuous use.
Applicant also indicated that its goods are manufactured in
Oregon “from mustard seed grown in the Northern tier states
and in Canada, but not in the Napa Valley.” Response filed
September 26, 2005. The examining attorney then withdrew
the refusals under Sections 2(e)(2) and 2(e)(3), and issued
a refusal under Trademark Act Section 2(a), 15 U.S.C.
§1052(a), on the ground that applicant’s mark is
geographically deceptive, and required a disclaimer of the
generic wording MUSTARD CO. Applicant responded by
disclaiming MUSTARD CO. and arguing against the refusal
under Section 2(a). This appeal followed. Briefs have
been filed and an oral hearing was held on February 27,
2007.
Serial No. 76624790
3
At issue on appeal is the refusal under Section 2(a).
It has been the examining attorney’s contention that
applicant does not dispute the finding that the mark is
geographically deceptive under Section 2(a). While
applicant has not argued the merits of the refusal, we do
not view this as a concession of geographical deceptiveness
under Section 2(a). Applicant argued the threshold
question of whether or not the application of Section 2(a)
is appropriate and, thus, did not reach the merits. By its
amendment to seek registration under Section 2(f) and its
admission that the goods do not emanate from NAPA VALLEY,
we may conclude that applicant has conceded that its mark
is, at least, primarily geographically misdescriptive. Cf.
Yamaha Int’l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d
1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988); In re Cabot
Corp., 15 USPQ2d 1224, 1229 (TTAB 1990). However, by
seeking registration under Section 2(f), applicant has not
conceded that its mark is geographically deceptive under
Section 2(a). Therefore, we will consider both the
threshold question of the applicability of Section 2(a) to
geographically deceptive marks and the merits of the
refusal.
It is applicant’s position that the following
highlighted provision in Section 2(f) of the Trademark Act
Serial No. 76624790
4
“precludes the application of any ground in Section 2 to
refuse registration of a mark which qualifies for
registration under the provision of Subsection 2(f).” (Br.
p. 3) Section 2(f) of the Trademark Act is set forth
below:
Except as expressly excluded in subsections (a),
(b), (c), (d), (e)(3), and (e)(5) of this
section, nothing herein shall prevent the
registration of a mark used by the applicant
which has become distinctive of the applicant’s
goods in commerce. The Director may accept as
prima facie evidence that the mark has become
distinctive, as used on or in connection with the
applicant’s goods in commerce, proof of
substantially exclusive and continuous use
thereof as a mark by the applicant in commerce
for the five years before the date on which the
claim of distinctiveness is made. Nothing in
this section shall prevent the registration of a
mark which, when used on or in connection with
the goods of the applicant, is primarily
geographically deceptively misdescriptive of
them, and which became distinctive of the
applicant’s goods in commerce before the date of
enactment of the North American Free Trade
Agreement Implementation Act.

15 U.S.C. §1052(f) (emphasis added).
Applicant supports its interpretation of Section 2(f)
by relying on the “Statement of the Committee on the
Judiciary – Summary of Subtitle C – Intellectual Property
Provisions of S. 1627, the North American Free-Trade
Agreement Implementation Act,” quoting the following
language:
Serial No. 76624790
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The bill contains a grandfather clause that
covers U.S. marks containing geographical terms
that are in use or registered prior to the date
of enactment.

Applicant argues that “[i]t was obviously the expressed
intent of Congress that eligible geographically deceptively
misdescriptive marks should be registrable and not rejected
because they are ‘deceptive,’ hence the proviso in
Subsection 2(f).” Br. p. 4. Applicant contends that the
examining attorney improperly relied on In re California
Innovations, 329 F.3d 1334, 66 USPQ2d 1853 (Fed. Cir.
2003), inasmuch as the application in that case was based
on intent to use and did not raise the issue of the
grandfather clause. Applicant further notes that the Court
in California Innovations stated that “[a]s a result of the
NAFTA changes to the Lanham Act, geographic deception is
specifically dealt with in subsection (e)(3), while
deception in general continues to be addressed under
subsection (a).” California Innovations, supra, 66 USPQ2d
at 1858.
We begin our analysis with a brief review of how the
USPTO has treated marks with geographic terms. Prior to
the implementation of NAFTA, with the consequent amendment
of the Lanham Act to place the refusal of primarily
geographically deceptively misdescriptive marks in Section
Serial No. 76624790
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2(e)(3), rather than in Section 2(e)(2) along with
primarily geographically descriptive marks, the USPTO
recognized three categories of geographic marks: 1)
primarily geographically descriptive, 2) primarily
geographically deceptively misdescriptive, and 3)
geographically deceptive. Marks falling in the first two
categories were refused registration under section 2(e)(2)
but were registrable upon a showing of acquired
distinctiveness under Section 2(f). The test for
determining whether a mark was primarily geographically
descriptive or primarily geographically deceptively
misdescriptive consisted of the following elements: the
primary significance of the mark is a generally known
geographic location; the goods or services do (for
geographically descriptive marks) or do not (for
geographically deceptively misdescriptive marks) originate
in the place identified in the mark; and purchasers would
be likely to believe that the goods or services originate
in the geographic place identified in the mark. See 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, 1452 (Fed. Cir.
1987) (primarily geographically descriptive); and In re
Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865, 867
Serial No. 76624790
7
(Fed. Cir. 1985) (primarily geographically deceptively
misdescriptive). Marks falling in the geographically
deceptive category were refused registration under Section
2(a) and were unregistrable, i.e., such marks were not
eligible for registration under Section 2(f). The test for
determining geographically deceptive marks mirrored the
test for primarily geographically deceptively
misdescriptive marks with the addition of the following
element: the geographic misrepresentation is a material
factor in the consumer’s decision to buy the goods or use
the services. See Institut National des Appellations
D’Origine v. Vintners International Co. Inc., 958 F.2d
1574, 22 USPQ2d 1190, 1195 (Fed. Cir. 1992). See also In
re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694 (TTAB
1992). Thus, the test under Section 2(a) had the added
element of materiality.
The NAFTA amendments assigned the same Section 2(a)
proscription to registration of geographically deceptive
marks to primarily geographically deceptively
misdescriptive marks under Section 2(e)(3) and, thus,
eliminated the ability of a primarily geographically
deceptively misdescriptive mark to qualify for registration
under Section 2(f). The Court, in California Innovations,
recognizing the serious implications for a primarily
Serial No. 76624790
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geographically deceptively misdescriptive term,
incorporated the test previously used under Section 2(a)
into the test used under the newly created Section 2(e)(3)
and included the materiality component for a refusal under
Section 2(e)(3), making it more difficult for a mark to be
refused registration on the basis that it is a primarily
geographically deceptively misdescriptive term.2
Although the Court recognized that Section 2(a) “has
traditionally been used to reject geographic marks that
materially deceive the public,” California Innovations,
supra, 66 USPQ2d at 1854, as a result of its decision the
Court noted that it anticipated that the “PTO will usually
address geographically deceptive marks under subsection
(e)(3), while deception in general continues to be
addressed under subsection (a).” Id. at 1858 (emphasis
added).

2 By imposing the more rigorous test with its element of
materiality, the Court has made fewer marks subject to a refusal
under Section 2(e)(3) and thus, not only will there be fewer
marks which otherwise would need to resort to the grandfather
provision of Section 2(f) in order to be registrable, but more
marks will be registrable simply because Section 2(e)(3) will be
inapplicable. Those marks in which the geographic
misdescriptiveness is not material to the purchasing decision,
that prior to the NAFTA amendments would have been regarded as
primarily geographically deceptively misdescriptive and thus
would have required a showing of acquired distinctiveness for
registration on the Principal Register, now no longer require
such a showing in order to be registrable. If the materiality
element cannot be supported, then a mark which otherwise would be
primarily geographically deceptively misdescriptive is
registrable on the Principal Register.
Serial No. 76624790
9
The Board recently discussed California Innovations in
In re South Park Cigar Inc., 82 USPQ2d 1507 (TTAB 2007).
The Board stated that “in keeping with the Court’s
instructions and its construction of the statute, we deem
the appropriate refusal in this case involving an allegedly
geographically deceptive mark to be only the Section
2(e)(3) ‘primarily geographically deceptively
misdescriptive’ refusal, and not the Section 2(a)
deceptiveness refusal.” Id. at 1509. The Board noted that
“unless the applicant is seeking registration ... on the
Principal Register under Section 2(f) based on a claim that
the mark had acquired distinctiveness prior to December 8,
1993, the proper refusal is under Section 2(e)(3), not
Section 2(a)...” Id. at 1509 n. 3.
We must now address precisely that circumstance noted
in the Board’s prior decision. As discussed above,
applicant essentially argues that the grandfather clause in
Section 2(f) overcomes a Section 2(a) geographical
deceptiveness refusal when the geographic term at issue has
been in use and had acquired distinctiveness prior to
December 8, 1993. As cited by applicant, a grandfather
clause “creates an exemption from the law’s effect for
something that existed before the law’s effective date;
spec., a statutory or regulatory clause that exempts a
Serial No. 76624790
10
class of persons or transactions because of circumstances
existing before the new rule or regulation takes effect.”
Black’s Law Dictionary, (8th ed. 2004).
Contrary to applicant’s argument, we find that the
Section 2(f) grandfather clause does not protect those
“geographically deceptive” marks that would have been
considered unregistrable under Section 2(a) prior to NAFTA.
Rather, the grandfather clause is meant to provide a means
for registering those marks that, prior to NAFTA
implementation, could have been registrable under Section
2(f), i.e., primarily geographically deceptively
misdescriptive marks where the geographic
misdescriptiveness was not material to the purchasing
decision. The fact that primarily geographically
deceptively misdescriptive marks post-NAFTA are now the
equivalent of geographically deceptive marks pre-NAFTA does
not render registrable a mark that pre-NAFTA would have
been refused as geographically deceptive under Section
2(a). The language of Section 2(f) clearly states that
marks refused under Section 2(a) are not registrable under
its provisions. The exception clearly applies only to pre-
NAFTA “primarily geographically deceptively misdescriptive”
marks, but not to pre-NAFTA “geographically deceptive”
marks.
Serial No. 76624790
11
In short, the purpose of the grandfather clause in
Section 2(f) is to allow registration of primarily
geographically deceptively misdescriptive marks that would
have been eligible for registration under Section 2(f)
prior to the NAFTA amendments and not, as applicant’s
interpretation would have it, to provide a windfall to
applicants seeking to register marks that prior to the
NAFTA amendments would have been unregistrable under
Section 2(a). Moreover, as noted above, a mark that was
geographically deceptive prior to December 8, 1993 was not
eligible for registration under Section 2(f) and thus
cannot be covered by the grandfather clause.
Building on the decision in South Park Cigar, we hold
that where an applicant is seeking registration for a mark
with a geographic term on the Principal Register under
Section 2(f) based on a claim that the mark had acquired
distinctiveness prior to December 8, 1993, a geographically
deceptive mark is properly refused registration under
Section 2(a). Nothing in the statute or legislative
history dictates otherwise. Moreover, this analysis is
consistent with the practice of the USPTO. See TMEP
Section 1210.05(a) (4th ed. 2005).
Serial No. 76624790
12
In view of our determination that the refusal under
Section 2(a) is proper, we now turn to consider the merits
of the refusal.
In support of the refusal under Section 2(a) the
examining attorney argues that the primary significance of
the phrase NAPA VALLEY is geographic and that the addition
of the generic or highly descriptive terms MUSTARD CO. does
not detract from the primary geographic significance. The
examining attorney submitted the dictionary definitions for
the terms MUSTARD and CO. showing that “mustard” is a
condiment made from powdered mustard seeds and “co.” is the
abbreviation for the word “Company.” See The American
Heritage Dictionary of the English Language (3d ed. 1992).
Moreover, as noted above, applicant has disclaimed these
terms.
With regard to the phrase NAPA VALLEY the examining
attorney submitted printouts from various websites
retrieved from the Internet where NAPA VALLEY is used by
third parties to describe a geographic location. See,
napanews.com and napavalley.com.
In support of the goods/place association and the
materiality elements, he attached printouts from various
websites where NAPA VALLEY is used by third parties in
Serial No. 76624790
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connection with mustard. As shown below, one example
pertains to applicant’s proposed mark.
Napa Valley Mustard Festival ... Celebrate the
food, wine, art, and the rich, unique
agricultural and cultural bounty of the Napa
Valley!
The Mustard Season offers a full palette of food,
wine, art, entertainment and cultural activities
staged throughout the world-famous grape growing
region when fields, vineyards, and hillsides are
vibrant with wild mustard in bloom.
www.mustardfestival.org;

Napa Valley Mustard Co. ... The beautiful Napa
Valley produces some of the finest array of
gourmet foods. We have selected our favorite
Napa Valley Mustards for you to enjoy.
www.oakvillegrocery.com;

Napa Valley Mustard Festival
Marketplace...Mustards and an array of gourmet
products will be showcased alongside sensational
wine country cuisine, world famous wines, hearty
craft brews, and fine arts and crafts. The
Marketplace will provide you with the opportunity
to explore the best of Napa Valley during the
most beautiful time of year in the wine country,
when the brilliant gold of mustard in bloom
carpets hillsides, valleys and vineyards.
www.upcoming.org; and

Another annual event The Napa Valley Mustard
Festival began in 1993 and promotes travel to the
Napa Valley in the “off season” with a number of
events celebrating food, wine and art. The
yellow mustard flowers that blanket the Napa
Valley every spring set the theme for over a
dozen dinners, wine tasting, art exhibits and
other events.

The bright yellow flowers are said to have
originated in California when Father Junipero
Serra made his first exploratory trip north
through the state scattering mustard seeds as he
went. His return trip the following spring was
Serial No. 76624790
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then guided by a path of blooming mustard.
www.inetours.com.

We are persuaded by the evidence of record that the
primary significance of the phrase NAPA VALLEY is a well
known geographic location. Further, applicant has
acknowledged that its goods do not originate from there.
The record also shows that purchasers are likely to believe
the goods originate from there. The evidence of a widely
advertised annual festival dedicated to mustard supports
the goods/place association, and the further connection of
the area to wineries and gourmet food enhance that
association. Moreover, applicant does not dispute that
NAPA VALLEY is a geographic term and, by seeking
registration under Section 2(f), has conceded that the mark
as a whole is geographically misdescriptive.
Finally, we find that the misrepresentation is a
material factor in a consumer’s decision to purchase these
goods inasmuch as the Napa Valley is known for mustard. We
particularly note the following statement in the
advertisement for applicant’s goods that clearly implies
that the mustard originates in NAPA VALLEY: “The beautiful
Napa Valley produces some of the finest array of gourmet
foods. We have selected our favorite Napa Valley Mustards
for you to enjoy.” Although it is not clear whether this
Serial No. 76624790
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advertisement for applicant’s goods was based on
applicant’s own materials, or whether the language was the
idea of the retailer, either way it shows that a selling
point for the mustard is that it comes from Napa Valley.
In summary, in view of the evidence submitted by the
examining attorney, we find that NAPA VALLEY is a well
known geographic location and that it is also sufficiently
known for mustard and other gourmet items for such location
to be a material factor in the purchasing decision. Thus,
the mark is unregistrable under Section 2(a).
Decision: The refusal under Section 2(a) is
affirmed.