British-American Tobacco (Holdings) Ltd.

Trademark Trial and Appeal Board

Sep 25, 2001

No. 75559558 (T.T.A.B. Sep. 25, 2001)

9/25/01

Paper No. 13
DEB

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re British-American Tobacco (Holdings) Limited
________

Serial No. 75/559,558
_______

Kathleen E. McCarthy, Maren Coburn and Charles P. Guarino
of Morgan & Finnegan, LLP for British-American Tobacco
(Holdings) Limited.

Tina L. Snapp, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Hanak, Quinn and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
British-American Tobacco (Holdings) Limited seeks
registration on the Principal Register of this mark:

for goods in five classes, identified as “sunglasses” in
International Class 9; “sports timing devices, namely,
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75/559,558
2
watches and stop watches,” in International Class 14;
“cloth flags” in International Class 24; “ornamental
novelty pins and badges,” in International Class 26; and
“scale model vehicles for collectors, model drivers'
helmets for collectors,” in International Class 28.1
The Trademark Examining Attorney issued a final
refusal to register based upon Section 6(a) of the
Trademark Act, 15 U.S.C. §1056(a), on the ground that
applicant has failed to comply with the requirement for a
disclaimer of the phrase “BRITISH AMERICAN.” Applicant has
volunteered to disclaim separately the word “BRITISH” and
the word “AMERICAN,” arguing that the record fails to show
that “‘British American’ is a unitary geographically
descriptive phrase in the context of the mark and goods at
issue here.” (Applicant’s reply brief, p. 1).
The Trademark Examining Attorney takes the position
that even if there is no such place as “British America,”
the term BRITISH AMERICAN is geographically descriptive
matter and therefore it must be disclaimed as a unitary
term prior to the issuance of a federal trademark
registration.

1 Application Ser. No. 75/559,558, filed on September 25,
1998, based upon applicant’s allegation of a bona fide intention
to use the mark in commerce.

Serial No. 75/559,558
3
Applicant makes a number of arguments supporting the
conclusion that it should not have to comply with the
Trademark Examining Attorney’s required format for a
disclaimer. Applicant argues that the evidence in the file
does not support the Trademark Examining Attorney’s basic
premise that the term “British American” is primarily
geographically descriptive. However, in an earlier case
having analogous facts, the Board dealt with a similar
issue:
[T]he basis for applicant's position is that
when combined in the phrase LONDON &
EDINBURGH, the individual geographic terms
become nongeographic because London &
Edinburgh is not the name of a particular
geographic place. We disagree. When the
mark LONDON & EDINBURGH INSURANCE is viewed
as a whole, the geographic significance of
the words is not lost. Consumers will still
regard the mark as referring to the cities
of London and Edinburgh, rather than to some
mythical place called "London & Edinburgh."
Nor can London & Edinburgh be considered
such an odd or incongruous combination of
geographic place names that consumers will
view it as an arbitrary combination without
a geographic significance to the whole … .”

In re London & Edinburgh Insurance Group Ltd., 36 USPQ2d
1367 (TTAB 1995)
Applicant argues that consumers who see its British
American Tobacco (and design) mark on the listed goods will
not assume that “British America” is a geographical place.
However, our decision does not turn on the existence of a
Serial No. 75/559,558
4
mythical place called “British America.” Rather, we
conclude that consumers will regard this combination of
words contained within applicant’s mark as having primarily
geographical significance. The LEXIS/NEXIS evidence
supports the conclusion that this is a combination that
consumers are quite accustomed to seeing as it is used in
the media and elsewhere. Furthermore, this geographical
significance is not lost with the addition of the word
“TOBACCO” to “BRITISH AMERICAN, or because the word
“tobacco” is arbitrary for these listed goods. That this
entire composite also happens to be part of applicant’s
logo, contains its trade name and constitutes a critical
component of its corporate identity is largely irrelevant
to this portion of our inquiry.
Applicant also argues that this composite will cause
people to assume that the goods come from applicant’s group
of affiliated companies. However, this argument as to
“secondary source” (viz. TMEP 1202.04(c)) does not obviate
the basic refusal pertaining to the geographical
designation. Rather, it means that while the term “British
American” is still primarily geographically descriptive,
the tie-in to applicant’s house mark may support a factual
showing of acquired distinctiveness as to the term “British
American Tobacco” (or maybe even the two word term here at
Serial No. 75/559,558
5
issue, “British American”) as to the racing souvenir items
listed in the instant application. However, such a showing
is not contained within the record before us herein.
We acknowledge that many of the third-party
registrations for marks containing “_______-AMERICAN”
placed in the record by the Trademark Examining Attorney
tend to point to enterprises and service organizations
identified with defined racial and ethnic groups that have
settled in this country. In that respect, we agree with
applicant they are not totally analogous and hence are of
limited value in reaching our decision herein.
Additionally, we agree with applicant that its earlier
decision to disclaim the term “BRITISH AMERICAN” in a
registration for tobacco is not binding on the applicant in
the instant applicant for totally different goods.
However, irrespective of the goods involved, it does
support the contention of the Trademark Examining Attorney
that in the past, the Office has considered the designation
“BRITISH AMERICAN,” like other “_______-AMERICAN” terms, to
be primarily geographical – a determination totally apart
from whether the current record supports a finding of
geographical descriptiveness for particular goods.
Finally, we turn to the few reported cases where the
exact formulation of the disclaimer has been discussed.
Serial No. 75/559,558
6
Petitioner's request for entering two
separate disclaimers of “glass” and
“technology” in the uniform wording is
inappropriate. To allow two separate
disclaimers of the individual words in the
standard printing format would effectively
permit piecemeal disclaimers of a unitary,
descriptive term. Disclaimers of individual
components of complete descriptive phrases
are improper. In re Surelock Mgf Co., 125
USPQ 23 (TTAB 1960). Unitary expressions
should be disclaimed as a composite.
America Speech-Language-Hearing Assn. v.
National Hearing Aid Society, 224 USPQ 798
(TTAB 1984). “Glass Technology” is a
unitary phrase which is descriptive of the
automobile windshield repair kits.
Therefore, the wording must be disclaimed in
the composite. Separate disclaimer of the
individual words, “glass” and “technology,”
in the standard printing format is improper.

In re Wanstrath, 7 USPQ2d 1412 (PTO Comm’r 1987).
Consistent with these reported decisions, long-
standing Office practice has required that unitary phrases
should be disclaimed in their entirety. Accordingly, the
Trademark Examining Attorney was correct in this instance
to require a disclaimer of the unitary phrase, BRITISH
AMERICAN.
Decision: The requirement, under Section 6 of the
Trademark Act, for a disclaimer of BRITISH AMERICAN is
affirmed.
In accordance with Trademark Rule 2.142(g), this
decision will be set aside and this application will be
returned to the Trademark Examining Attorney to place in
Serial No. 75/559,558
7
condition for publication for opposition if applicant, no
more than thirty days from the mailing date of this
decision, submits an appropriate disclaimer of BRITISH
AMERICAN.