BrandMark LLC

Trademark Trial and Appeal Board

Feb 13, 2007

No. 78726602 (T.T.A.B. Feb. 13, 2007)

Mailed:
13 February 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

Trademark Trial and Appeal Board
___________

In re BrandMark LLC
___________

Serial No. 78726602
___________

Antoinette M. Tease of Antoinette M. Tease, P.L.L.C. for
BrandMark LLC.

Hanno Rittner, Trademark Examining Attorney, Law Office 117
(Loretta C. Beck, Managing Attorney).
_____________

Before Bucher, Drost, and Zervas, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On October 4, 2005, applicant (BrandMark LLC) applied,
under the intent to use provisions of the Trademark Act (15
U.S.C. § 1051(b)), to register on the Principal Register the
mark ESPAÑA GROVE, in standard character form, for goods in
Class 32 ultimately identified as follows:
Non-alcoholic beverages, namely, drinking waters,
mineral and aerated waters, fruit drinks, fruit juices,
vegetable juices in beverage form, carbonated soft
drinks, energy drinks and hypertonic sports drinks;
fruit and vegetable concentrates for the mixing of
drinks; syrups for making fruit and carbonated
beverages; alcoholic beverages, namely, beer.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 78726602
2
The examining attorney has refused to register
applicant’s mark on the grounds that the mark is primarily
geographically deceptively misdescriptive and geographically
deceptive under the provisions of Sections 2(e)(3) and 2(a)
of the Trademark Act. 15 U.S.C. §§ 1052(e)(3) and (a). When
the refusals to register were made final, applicant appealed
to this board. In the examining attorney’s appeal brief, the
examining attorney withdrew the refusals as they applied to
certain goods in the identification of goods. Therefore, the
only goods that are now subject to the examining attorney’s
refusals are set out below:
Non-alcoholic beverages, namely, fruit drinks, fruit
juices, fruit concentrates for the mixing of drinks;
syrups for making fruit beverages.

We begin our analysis by looking at the record in this
case. In response to the examining attorney’s first Office
action, applicant submitted the following statement: “The
foreign wording in the mark translates into English as
‘Spain.’” The examining attorney also included a definition
of “España” as “Spain.” WordReference.com English-Spanish
Dictionary. At this point, we add that the word “España” in
English is defined as the “Spanish name of Spain.” The
Ser. No. 78726602
3
Random House Dictionary of the English Language (unabridged)
(2d ed. 1987).1
With the final refusal, the examining attorney included
definitions of “grove” that included the following: “a group
of trees planed and cultivated for the production of fruit or
nuts: an orange grove.” Dictionary.com. Also, in response
to an inquiry from the examining attorney, applicant2
responded: “The undersigned counsel has been informed by the
client that the identified goods are not and will not be
manufactured, produced or sold in Spain, nor will they have
any other connection with Spain.” Response dated April 17,
2006 at 1.
The examining attorney also submitted evidence
concerning Spain and fruit that indicates that Spain is a
major producer of citrus fruits. “In the Mediterranean
countries, citrus fruits are produced mainly for fresh fruit
consumption. Spain is the leading producing country in the
area.” InfoComm Market Information in the Commodities Area.
www.unctad.org. In a chart from the report concerning

1 We take judicial notice of this definition. University of Notre
Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596
(TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
2 Applicant identifies itself as a Tennessee limited liability
company located in Lakeland, Tennessee.
Ser. No. 78726602
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citrus production, Spain is identified as one of the leading
exporters of citrus fruit:

Indeed, Spain is listed as a major, if not the leading,
source of oranges, small citrus, lemons, limes, and
grapefruit.

Other evidence discusses the reputation of Spain for
citrus fruit. See Citrus: Tastes So Sweet, DoItYouself.com:
Blood oranges are old varieties of oranges that until
recently were virtually unknown in the U.S. despite our
huge citrus industries. The red color of the flesh and
juice is the most obvious difference, but there’s
something more to the flavor as well. Americans
Ser. No. 78726602
5
traveling in France, Italy or Spain would relish a glass
of blood orange juice, sometimes believing it a mixture
of regular orange juice with raspberry and other fruit
juices…

“Sanguinelli” blood orange. This is a late-ripening
blood orange from Spain. The flesh is usually a shade
lighter than “Moro,” but skin color is often a stunning
cherry red…

Clementines
Perhaps the best-known Mandarin by name. Clementines
have been popular for years, especially in the Eastern
U.S. Their arrival in the markets is a cause for
celebration… Most Clementines that reach the U.S. are
grown in Mediterranean Europe and are seedless
varieties.

Spain also is the second largest exporter of grape juice
and grape juice concentrates to the United States.
www.cawg.com (“U.S. imports of grape juice and grape
concentrate came from thirteen (13) countries in 1999. The
top five exporters to the U.S. were Argentina (55.4%); Spain
(11.2%); Mexico (8.4%); Brazil (6.7%) and Italy (4.4%)”).
Spanish fruit is touted for its quality and diversity.
www.rentspain.com:
For thousands of years Spanish farmers have produced
some of the finest fruits in the world, unsurpassed in
both the variety and quality available. The diverse
selection of fruits grown in the groves, vineyards and
orchards across the Iberian Peninsula suite any taste or
palate….

Spanish citrus fruits, particularly oranges, lemons and
mandarins are grown under irrigation in the
Mediterranean coastal provinces, which extends the
growing season to cover the entire year and guarantees
an extremely high standard of quality to the harvest.
Ser. No. 78726602
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For over a generation this has maintained Spain’s status
as the leading producer in Western Europe and the
world’s foremost exporter of citrus fruit.

The farmers of each district produce a large selection
of fruit, often specializing in a regional variety for
which they are most renowned. The most popular unique
local specialties include giant strawberries of Huelva;
the tasty winter tomatoes of Almeria; and the
Chirimoyas, or custard apples from all across Andalusia.

However, the superb muscatel grapes grown in Malaga are
often the most highly regarded of all Spain’s fruit.
These delicious grapes are destined to become the
excellent wine and raisins of Malaga and benefit from
the perfect agricultural conditions found in and around
the capital of the Costa Del Sol.

Furthermore, an article refers to a store selling
“Spanish juices, food and spices bought by Hispanics on the
[Eastern] Shore.” Hispanic Trending, juantornoe.blogs.com.
The website www.alibaba.com advertises numerous juices and
juice and fruit products from Spain, e.g., “100% Fruit Juices
and Nectars in Bottles,” “Fruit Juices – Health and Energy
Lines,” and “Canned Peaches.” Finally, the United States
“has remained a net fruit importer. U.S. fruit imports grew
during the last two decades and through the early 2000’s, due
in part to the growing ethnic population in the United States
… Western Europe is a major supplier of processed fruit such
as wine and fruit juices.” www.ers.usda.gov.
Applicant has submitted numerous printouts with its
appeal brief to which the examining attorney has objected.
Ser. No. 78726602
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These printouts include detailed statistics from the U.S.
Census Bureau’s website on the Hispanic population of the
Unite States and printouts of several U.S. trademark
registrations. We agree that this evidence is untimely. 37
CFR § 2.142(d). See also In re N.V. Organon, 79 USPQ2d 1639,
1640 n.2 (TTAB 2006) (“Additional evidence filed after appeal
normally will not be considered”). Moreover, we do not take
judicial notice of registrations in the USPTO. In re
Carolina Apparel, 48 USPQ2d 1542, 1542 n.2 (TTAB 1998) (“The
Board does not take judicial notice of third-party
registrations, and the mere listing of them is insufficient
to make them of record”).3
In light of the evidence of record, the examining
attorney argues that “because Spanish groves are renowned for
production of the finest citrus fruits in the world and in

3 We add that registrations involving such terms as COLUMBIA (a term
with numerous meanings in the United States) and ARIZONA ICED TEA
SUN BREWED STYLE would have little, if any relevance, to this
proceeding. Also, “[e]ven if some prior registrations had some
characteristics similar to [the] application, the PTO's allowance of such
prior registrations does not bind the Board or this court.” In re Nett
Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
Furthermore, the evidence about the exact size of the Hispanic
population in the United States appears to have little significance
to the facts of this case. The fact that there is a large Spanish-
speaking population in the United States is suggested by the
examining attorney’s evidence. See also In re Thomas, 79 USPQ2d
1021, 1024 (TTAB 2006) (“[A]pplicant’s own evidence shows that of
the foreign languages with the greatest number of speakers in the
United States, French is ranked second only to Spanish”). We add
that even if all of applicant’s untimely evidence were considered,
it would not change the result.
Ser. No. 78726602
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the absence of counter-evidence, it is ‘likely’ that a
consumer forms a mistaken belief that the origin of the fruit
in the goods [is] from Spain.” Brief at unnumbered p. 12.
The examining attorney also maintains (Brief at unnumbered p.
13) that consumers “are materially influenced to buy fruit
juices and citrus fruit products marked as originating from a
‘grove of Spain’ because 1) a principal product of Spain is
fruit juice and citrus fruits and 2) Spanish fruit and fruit
juices are an added value to consumers.”
Applicant argues (Reply Brief at 2) that:
Contrary to the assumption upon which the examiner’s
argument appears to be based, the term “Hispanic” or
“Spanish” does not mean that something comes from Spain.
See the attached definition of the term “Spanish,” which
means not only “of or pertaining to Spain, its people,
or their language” but also “the Spanish people
collectively” and “the language of Spain, standard in
most of Latin America except Brazil.” The term
“Hispanic” is synonymous with “Spanish” (see attached
dictionary definition). It also means “Latin American”
or “an American citizen or resident of Spanish or Latin
American descent.”

The examiner’s argument assumes that consumers will see
the word “ESPAÑA” and assume that the product originates
from Spain, when that is not the case. The terms
“Spanish” and “Hispanic” have a much broader meaning and
are associated with parts of the globe other than Spain
itself.

We begin by responding to this argument of applicant by
noting that both definitions applicant references are from
online dictionaries that were not previously of record, and
Ser. No. 78726602
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unlike print dictionaries, we do not take judicial notice of
online dictionaries. In re Total Quality Group, Inc., 51
USPQ2d 1474, 1476 (TTAB 1999). Second, it appears that
applicant has overstated the relationship between “Spanish”
and “Hispanic.” Undoubtedly, there is some overlap between
the terms but they cannot possibly be synonyms (a word having
the same or nearly the same meaning as another in the
language). Applicant has presented no evidence that there
are interchangeable references such as the “Hispanic
Army/Spanish Army,” the “Hispanic countryside/Spanish
countryside” or “Hispanic King/Spanish King.” Third,
applicant’s own argument makes it clear that “Spanish” means
“of or pertaining to Spain, its people, or their language.”
There is no evidence that products that are not from Spain
are referred to as “Spanish” because they come from Latin
America. Finally, we emphasize that the term at issue is not
“Hispanic” or even “Spanish” but “España.” Applicant itself
translates the term as “Spain” and the dictionary of record
confirms that translation. Indeed, even the English
dictionary defines “España” as the Spanish name for Spain.
We are unaware of any other translation that the term can
have besides “Spain” and applicant has not even suggested
one. It is not clear why any Spanish-speaking person or even
Ser. No. 78726602
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many non-Spanish speaking residents of the United States with
even a passing familiarity with the country of Spain would
have any question that the term ESPAÑA unambiguously means
Spain.
We now move to the merits of the refusals. The question
then is whether ESPAÑA GROVE is primarily geographically
deceptively misdescriptive or geographically deceptive for
applicant’s fruit drinks, juices, concentrates, and syrups.
In In re California Innovations Inc., 329 F.3d 1334, 66
USPQ2d 1853, 1856 (Fed. Cir. 2003), the Federal Circuit
explained the new relationship between Sections 2(e)(3) and
2(a), as a result of the amendments to the Trademark Act:
§ 1052 no longer treats geographically deceptively
misdescriptive marks differently from geographically
deceptive marks. Like geographically deceptive marks,
the analysis for primarily geographically deceptively
misdescriptive marks under § 1052(e)(3) focuses on
deception of, or fraud on, the consumer. The
classifications under the new § 1052 clarify that these
two deceptive categories both receive permanent
rejection. Accordingly, the test for rejecting a
deceptively misdescriptive mark is no longer simple lack
of distinctiveness, but the higher showing of
deceptiveness.

The TMEP (Section § 1210.05(a)(4th ed. 2005) (emphasis
added)) has explained the effect that this has had on USPTO
practice:
Prior to the amendment of the Trademark Act by the NAFTA
Implementation Act, the test for determining whether a
mark was primarily geographically deceptively
Ser. No. 78726602
11
misdescriptive under §2(e)(3) of the Trademark Act
differed from the test for determining whether a mark
was deceptive under §2(a) of the Act, 15 U.S.C.
§1052(a). To establish that a mark was primarily
geographically deceptively misdescriptive under
§2(e)(3), the examining attorney had to show that the
primary significance of the mark was geographic, that
purchasers would be likely to believe that the goods or
services originated in the place named in the mark, and
that the goods or services did not originate in that
place. In re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889
(CCPA 1982). An additional showing of "materiality" was
required to establish that a mark was deceptive under
§2(a), i.e., a showing that a goods/place or
services/place association made by purchasers was
"material" to the decision to purchase the goods or
services. Bureau National Interprofessionnel Du Cognac
v. International Better Drinks Corp., 6 USPQ2d 1610
(TTAB 1988); In re House of Windsor, Inc., 221 USPQ 53
(TTAB 1983), recon. denied, 223 USPQ 191 (TTAB 1984).

Current Practice. The Court of Appeals for the Federal
Circuit has held that with the NAFTA amendments, §2 of
the Act “no longer treats geographically deceptively
misdescriptive marks differently from geographically
deceptive marks," and that a showing of public deception
is required to establish that a mark is unregistrable
under §2(e)(3). In re California Innovations Inc., 329
F.3d 1334, 1339, 66 USPQ2d 1853, 1856 (Fed. Cir. 2003),
reh'g denied, 2003 U.S. App. LEXIS 18883 (Fed. Cir. Aug.
20, 2003). Thus, the test for determining whether,
post-NAFTA, a mark is primarily geographically
deceptively misdescriptive under §2(e)(3) is now the
same as the test for determining whether a mark is
deceptive under §2(a). Id., 329 F.3d at 1340, 66 USPQ2d
at 1857.4

4 In addition, TMEP § 1210.05 provides that:
Although the test for determining whether a mark is primarily
geographically deceptively misdescriptive under § 2(e)(3) is
now the same as the test for determining whether a mark is
deceptive under § 2(a), the statutory provisions with respect
to registrability on the Supplemental Register and on the
Principal Register under § 2(f) are different…
[B]ecause the statute expressly prohibits registration of
deceptive marks on the Supplemental Register or on the
Ser. No. 78726602
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Therefore, as a result of these changes, we will discuss
the primarily geographically descriptive refusal although our
discussion is equally applicable to the geographically
deceptive refusal. As discussed above, this type of refusal
requires the examining attorney to show that:
1. The primary significance of the mark is geographic;

2. That the consuming public would likely believe that
the place identified by the mark indicates the origin of the
goods when the goods do not originate in that place; and

3. That the misrepresentation would be a material factor
in the purchaser’s decision to buy the goods.

See In re Les Halles de Paris J.V., 334 F.3d 1371, 67 USPQ2d
1539, 1541 (Fed. Cir. 2003) (restaurant services) and
California Innovations, 66 USPQ2d at 1858.
Regarding the first factor, we have already discussed
the term “España” and we have no doubt that the term has an
unambiguous meaning of “Spain” in Spanish and also to a large
number of English speakers. Also, adding the term “Grove”
does not create a non-geographically descriptive term. The
goods in this case are various types of fruit-based products.

Principal Register under § 2(f), the examining attorney will
initially refuse registration of geographically deceptive
marks under both §§ 2(a) and 2(e)(3). If the applicant
alleges use in commerce prior to December 8, 1993 and amends
to the Supplemental Register, or establishes that the proposed
mark acquired distinctiveness under § 2(f) before December 8,
1993, the examining attorney will withdraw the § 2(e)(3)
refusal, but will not withdraw the § 2(a) refusal.
Ser. No. 78726602
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The dictionary of record makes it clear that “groves” are “a
group of trees planed and cultivated for the production of
fruit or nuts: an orange grove.” The mark ESPAÑA GROVE as a
whole would be likely to be perceived as indicating the
geographic origin of applicant’s fruit-related products and,
therefore, the primary significance of the mark is geographic
for fruit products grown in groves in Spain. See, e.g., In
re Wada, 194 F.3d 1297, 52 USPQ2d 1539, 1540-41 (Fed. Cir.
1999) (Federal Circuit affirmed the board’s finding that the
“primary geographic significance is not lost by the addition
of WAYS GALLERY to NEW YORK”). Accord In re Budge
Manufacturing Co. Inc., 857 F.2d 773, 8 USPQ2d 1259 (Fed.
Cir. 1988) (LOVEE LAMB for automotive seat covers not made
from lambskin held to be deceptive).
Concerning the next factor, we conclude that the
purchasers would be likely to believe that applicant’s goods
originated in “España” or Spain.5 Spain is a major source of
many types of citrus fruits including oranges, lemons, limes,
and grapefruit. It is also the second largest exporter of
grape juice and grape juice concentrates to the United

5 While the Federal Circuit has noted that in “a case involving goods, the
goods-place association often requires little more than a showing that the
consumer identifies the place as a known source of the product,” Les
Halles, 67 USPQ2d at 1541, the evidence shows that Spain is not only a
known source for fruit products but one of the leading sources of various
fruit products.
Ser. No. 78726602
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States. Inasmuch as Spain is a major producer and exporter
of fruit and fruit-based products, potential purchasers are
likely to believe that the goods originate in Spain.
Furthermore, we note that applicant has unequivocally
stated that its goods “are not and will not be manufactured,
produced or sold in Spain, nor will they have any other
connection with Spain.” See also Brief at 3 (Applicant “does
not dispute that its products will not originate from
Spain”). We add that applicant is a Tennessee company that
is likewise located in that state. Therefore, while the
application involved in this appeal is an intent to use
application, it is clear that there is no dispute that the
goods will not originate in Spain.
The last issue is whether the misrepresentation is a
material factor in a consumer’s decision to purchase
applicant’s goods. “For goods, the PTO may raise an
inference in favor of materiality with evidence that the
place is famous as a source of the goods at issue.” Les
Halles, 67 USPQ2d at 1542. As evidence of the materiality,
the examining attorney has included evidence that Spain is
one of the leading, if not the major exporter of oranges,
small citrus, lemons, limes, and grapefruits. Spain is also
the second leading source of grape-related exports to the
Ser. No. 78726602
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United States. In addition, as the previously discussed
evidence indicates, Spain’s fruit is touted for its high
standard of quality, its long growing season, and its
diversity. Rentspain.com. More specifically, “Americans
traveling in France, Italy or Spain would relish a glass of
blood orange juice.” One of these blood oranges is the
Sanguinelli, “a late-ripening blood orange from Spain.”
Doityourself.com. Clementines, which are very popular in the
eastern United States “are grown in Mediterranean Europe.”
Id. We simply cannot agree with applicant’s argument that
“there is no evidence that [the consumers’] assumption [that
the goods come from Spain] would be a material factor in
their decision to purchase the applicant’s goods.” Reply
Brief at 2. Obviously, it would be a rare case in which the
Office would find evidence that expressly says that “the
reason consumers buy Product A is because it comes from
Geographical Area X, which is noted for Product A.”
Therefore, it is not surprising that the examining attorney
has not presented that type of evidence in this case.
Instead, the examining attorney has demonstrated that Spain
is a major producer of various fruits, a factor that is
entitled to some weight. Furthermore, consumers are
described as “relishing” blood orange juice while in Spain,
Ser. No. 78726602
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and celebrating the arrival of Clementines from Mediterranean
Europe in the Eastern U.S. In addition, Spain has been
touted as a source of “some of the finest fruits in the
world, unsurpassed in both the variety and quality
available.” It is reasonable to assume that consumers, aware
of these statements and claims about Spanish fruit, would be
materially influenced in their decisions to purchase goods of
applicant’s type identified by the term ESPAÑA GROVE. We add
that applicant has offered no evidence that undercuts the
evidence of materiality of the term “Spain” or “España.”
Therefore, we conclude that the term ESPAÑA GROVE, when
it is used on non-alcoholic beverages, namely, fruit drinks,
fruit juices, fruit concentrates for the mixing of drinks;
and syrups for making fruit beverages, would be primarily
geographically deceptively misdescriptive of those goods that
do not originate in Spain. Furthermore, inasmuch as the
standards are the same, the term would also be geographically
deceptive of the same goods.
Decision: The refusals under Sections 2(a) and 2(e)(3)
of the Trademark Act are affirmed.