Christoph Geskes

Trademark Trial and Appeal Board

Feb 9, 2012

No. 77911173 (T.T.A.B. Feb. 9, 2012)

Mailed: February 9, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Geskes
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Serial No. 77911173
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Mark B. Harrison and Michael E. Hall of Venable LLP for
Christoph Geskes.

Andrea R. Hack,1 Trademark Examining Attorney, Law Office
108 (Andrew Lawrence, Managing Attorney).
_______

Before Kuhlke, Taylor and Wellington, Administrative
Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

Christoph Geskes (“applicant”) has filed an
application to register on the Principal Register the mark
THE MUNICH and design, shown below

for goods ultimately identified as:
“Advertising; business management services; business
administration; office functions; forestry management

1 A different examining attorney initially was responsible for
the application.
THIS DISPOSITION
IS NOT A PRECEDENT
OF THE TTAB
Ser No. 77911173

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services; forestry management consultation” in
International Class 35;

“Insurance and reinsurance agencies; insurance
underwriting services for all types of insurance;
reinsurance underwriting; insurance and reinsurance
consultancy; insurance and reinsurance information;
insurance and reinsurance subrogation; insurance and
reinsurance brokerage; insurance and reinsurance
actuarial services; insurance and reinsurance
administration; insurance and reinsurance claims
processing; consultation in the fields of insurance,
reinsurance, insurance underwriting and reinsurance
underwriting; consultation services in the fields of
property insurance, casualty insurance, reinsurance,
legal expenses insurance, liability insurance, life
insurance, fire insurance, accident insurance, and
health insurance as well as in the field of
administration of insurance and reinsurance claims;
financial affairs, namely, financial information,
management and analysis services; financial advice;
financial consultation; financial forecasting;
financing services; financial research; consultation
in the field of financial risk management; financial
services, namely, consultation in finance management
and planning; monetary exchange; acquisition and
transfer of monetary claims; monetary strategy
consultation and research; real estate consultation;
real estate agencies; real estate appraisal; real
estate brokerage; real estate listing; real estate
financing services; real estate investment services”
in International Class 36 and

“Medical and veterinary services; hygienic and beauty
care for human beings; agricultural advice; forest
habitat restoration” in International Class 44.2

2 Application Serial No. 77911173 filed January 13, 2010, based
on Section 44(e) of the Trademark Act, 15 U.S.C. § 1126(e), with
a claim of priority under Section 44(d) of the of the Act, 15
U.S.C. § 44(d), based on a German application [and registration]
number 302009058764, and an allegation of a bona fide intention
to use the mark in commerce under Trademark Act Section 1(b), 15
U.S.C. § 1051(b). The application includes the following
statements: “The mark consists of the wording ‘THE MUNICH’ to the
left of three concentric semicircles, the innermost of which
begins and ends on a horizontal axis, the next on a vertical
Ser No. 77911173

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The examining attorney issued a final requirement that
applicant disclaim the exclusive right to use the term
“MUNICH” because it is geographically descriptive of the
identified services.
Applicant appealed and the appeal is fully briefed.
As discussed below, we affirm the refusal to register for
applicant’s failure to disclaim “MUNICH.”
An examining attorney may require an applicant to
disclaim an unregistrable component of a mark otherwise
registrable. Section 6 of the Trademark Act, 15 U.S.C. §
1056. Primarily geographically descriptive terms are
unregistrable under Trademark Act Section 2(e)(2) and,
therefore, are subject to disclaimer if the mark is
otherwise registrable. Failure to comply with a disclaimer
requirement is a ground for refusal of registration. See
In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859
(Fed. Cir. 1987); and In re Box Solutions Corp., 79 USPQ2d
1953 (TTAB 2006).
A mark is considered to be primarily geographically
descriptive if (1) it is the name of a place and this place
is generally known to the public, and (2) the public would
make a goods/place association, that is, believe that the

axis, and the outmost on a diagonal axis.” “Color is not claimed
as a feature of the mark.”
Ser No. 77911173

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goods or services for which the mark is sought to be
registered originate in that place. See In re Urbano, 51
USPQ2d 1776 (TTAB 1999); and In re California Pizza
Kitchen, Inc., 10 USPQ2d 1704 (TTAB 1988). Where there is
no genuine issue that the geographical significance of a
term is its primary significance and where the geographical
place is neither obscure or remote, a public association of
the goods or service with the place may ordinarily be
presumed from the fact that the applicant’s own goods or
services come from the geographical place named in the
mark. In re Harvey & Sons Ltd., 32 USPQ2d 1451 (TTAB
1994); In re Handler Fenton Westerns, Inc., 214 USPQ 848
(TTAB 1982).
It is the examining attorney’s position that MUNICH is
primarily geographically descriptive of applicant’s
identified services because “it is a generally known city
in Germany, because applicant’s services will originate in
Munich, and because consumers will be likely to make a
service-place association between the mark and the city.”
Br. unnumbered p. 6.
In support of the refusal, the examining attorney made
of record a definition of Munich from YourDictionary.com
(citing The American Heritage® Dictionary of the English
Ser No. 77911173

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Language (4th ed. 2010)), of which we take judicial notice,3
and an excerpt from Wikipedia,4 showing that Munich is a
well known city in Germany. The examining attorney also
points to the prosecution history of the application where
applicant “advises that the services will originate from
Munich.”5
The examining attorney also has made of record several
definitions of “the,” of which we additionally take
judicial notice.
Based on the definition and Wikipedia excerpt of
Munich of record, we find that the primary significance of
MUNICH is geographic, and that the city of Munich is
neither obscure nor remote. Further, as indicated,
applicant’s services originate from Munich. Accordingly,
we presume a public association of applicant’s services
with Munich. Applicant notably does not dispute this.
Rather, in urging reversal of the disclaimer
requirement and refusal to register based thereon,

3 The Board may take judicial notice of dictionary definitions,
Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213
USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed.
Cir. 1983), including online dictionaries that exist in printed
format or have regular fixed editions. In re Red Bull GmbH, 78
USPQ2d 1375, 1377 (TTAB 2006).

4 First Office Action, issued April 15, 2010.

5 Applicant’s August 17, 2010 response at p. 3.

Ser No. 77911173

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applicant argues that a disclaimer is unwarranted in this
case because the combination of THE and MUNICH results in
an incongruity.
Specifically, applicant contends:
THE MUNICH is incongruous because in common
usage the word the is a definite article
that is not used before the names of cities.
And, of course, “incongruity is one of the
accepted guideposts in the evolved set of
legal principles for discriminating the
suggestive from the descriptive mark.” In
re Shutts, 217 U.S.P.Q. 363, 364-65
(T.T.A.B. 1983) (SNO-RAKE held not merely
descriptive).6

We take, in response to applicant’s request, judicial
notice of the definition of “incongruous,” taken from the
online version of the Encarta® World English Dictionary
[North America Edition 2009]:7
1. unsuitable or odd: unsuitable or out of place in
a specific setting.

6 Applicant’s br. p. 3.
7 Found at http://encarta.msn.com..., and retrieved on March 31,
2011.
We also take judicial notice, as requested, of the
definitions, taken from Webster’s New World College Dictionary,
pp. 186, 639 and 948, respectively, (4th ed. 1999), of: “Bronx”
(“northern–most borough of New York City … commonly called the
Bronx”); “Hague” (“The city in W Netherlands…”); and “Munich”
(“city in SE Germany”), which applicant made of record to
traverse the examining attorney’s argument regarding the
placement of the article “the” before geographic locales. The
examining attorney’s argument is not well taken for the reasons
explained by applicant, i.e., that when included, the definite
article “the” is either a part of the actual place name or a
common nickname.

Ser No. 77911173

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As both applicant and the examining attorney aptly
observe, if two or more terms are combined in a mark to
create an incongruity (e.g., URBAN SAFARI, MR. MICROWAVE,
and DR. GRAMMER, the mark is unitary and disclaimer of
nondistinctive individual elements is necessary.” See TMEP
§ 1209. In this regard, the Board has noted that the
concept of mere descriptiveness “should not penalize
coinage of hitherto unused and somewhat incongruous word
combinations whose import would not be grasped without some
measure of imagination and ‘mental pause.’” In re Shutts,
supra; see also In re Vienna Sausage Mfg. Co., 156 USPQ
155, 156 (TTAB 1967) (FRANKWURST held not merely
descriptive for wieners, the Board finding that although
“frank” may be synonymous with “wiener,” and “wurst”
synonymous with “sausage,” the combination of the terms is
incongruous and results in a mark that is not more than
suggestive of the nature of the goods) and In re John H.
Breck, Inc., 150 USPQ 397, 398 (TTAB 1966) (TINT TONE held
suggestive for hair coloring, the Board finding that the
words overlap in significance and their combination is
somewhat incongruous or redundant and does not immediately
convey the nature of the products).
At bottom, applicant’s argument is whether the
addition of the definite article “The” before the word
Ser No. 77911173

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MUNICH in applicant’s composite mark THE MUNICH, turns the
unregistrable term MUNICH into a trademark. We find it
does not. As discussed in a number of cases, the definite
article “THE” has no source-indicating capacity when added
to an otherwise descriptive term. See e.g., S.S. Kresge
Company v. United Factory Outlet, Inc., [fed cite
unavailable], 209 USPQ 924, 928 (D. Mass. 1980) (“The Mart”
generic for retail stores; “The addition of the prefix
‘The’ as indicating a possible uniqueness cannot change the
basic meaning of the term [Mart]”); The Conde Nast
Publications Inc. v. Redbook Publishing Company, 217 USPQ
356, 357 (TTAB 1983) (THE MAGAZINE FOR YOUNG WOMEN generic
for magazines; “the fact that the slogan also includes the
article ‘The’ is insignificant. This word cannot service
as an indication of origin.”).
Here, contrary to applicant’s assertion and unlike in
the examples discussed above, the mere geographic
descriptiveness is not eliminated by the placement of the
definite article “THE” before the word MUNICH. That is,
THE MUNICH considered as a whole is as primarily
geographically descriptive as the term MUNICH when
considered alone. As explained, the definite article “THE”
simply has no inherent source-indicating significance, and
combining it with MUNICH, albeit in a grammatically
Ser No. 77911173

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incorrect manner, does not create a unique, incongruous or
geographically non-descriptive term whose meaning would
require some measure of imagination and “mental pause.” We
accordingly conclude that a disclaimer of “MUNICH” is
necessary.
Decision: The refusal to register based on the
requirement for a disclaimer of MUNICH is affirmed.
However, if applicant submits the required disclaimer of
MUNICH to the Board within thirty days of the mailing date
of this decision, the decision will be set aside as to the
affirmance of the disclaimer requirement.8 See Trademark
Rule 2.142(g), 37 C.F.R. § 2.142(g).

8 The standard printing format for the required disclaimer text
is as follows: “No claim is made to the exclusive right to use
MUNICH apart from the mark as shown.” TMEP § 1213.08(a)(i) (8th
ed. 2011).