Fame Jeans, Inc.

Trademark Trial and Appeal Board

Mar 16, 2004

No. 78091743 (T.T.A.B. Mar. 16, 2004)

Oral Hearing:
December 11, 2003
March 16, 2004
Paper No. 16
CEW
UNITED STATES PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Fame Jeans, Inc.
___________
Serial No. 78091743
___________
Lewis F. Gould of Duane Morris for Fame Jeans, Inc.
Michael Levy, Senior Attorney, and Rebecca A. Smith,1
Trademark Examining Attorney, Law Office 110 (Chris A.F.
Pedersen, Managing Attorney).
____________
Before Sams, Walters and Rogers, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Fame Jeans, Inc. has filed a trademark application to
register the mark US WEAR for “clothing, namely, boys and
girls sportswear, namely, pants, jumpers, overalls,
coveralls and woven and knit shirts and skirts.”2 The

1 Mr. Levy argued the case at the oral hearing. Ms. Smith issued the
final refusal to register, following initial examination by a third
Examining Attorney, and wrote the brief on appeal.
2 Serial No. 78091743, in International Class 25, filed November 5,
2001, based on use of the mark in commerce, alleging first use and use
in commerce as of April 2000; with a claim of priority, under Section
44(d) of the Trademark Act, 15 U.S.C. 1126(d), based on a Canadian
application. However, on March 13, 2002, applicant deleted its Section
44(d) claim of priority.
THIS OPINION IS NOT
CITABLE
AS PRECEDENT OF
THE TTAB
Serial No. 78091743
2
application includes a disclaimer of “WEAR” apart from the
mark as a whole.
The Trademark Examining Attorney issued a final refusal
to register under Section 2(e)(3) of the Trademark Act, 15
U.S.C. 1052(e)(3), on the ground that applicant’s mark is
primarily geographically deceptively misdescriptive in
connection with its goods; and under Section 2(a) of the
Trademark Act, 15 U.S.C. 1052(a), on the ground that
applicant’s mark is deceptive of the origin of its goods.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs and an oral hearing was
held.
The North American Free Trade Agreement (NAFTA)
Implementation Act, Pub. L. No. 103-182, 107 Stat. 2057
(1993) amended Section 2(e)(2) of the Trademark Act by
deleting reference to primarily geographically deceptively
misdescriptive marks; added Section 2(e)(3) to the Trademark
Act to prohibit registration of primarily geographically
deceptively misdescriptive marks; and amended Section 2(f)
of the Trademark Act to prohibit primarily geographically
deceptively misdescriptive marks from becoming registrable
via a showing of acquired distinctiveness.
Prior to the briefing stage in this ex parte appeal,
our primary reviewing court, in In re California
Innovations, Inc., 329 F.3d 1334, 66 USPQ2d 1853 (Fed. Cir.
Serial No. 78091743
3
2003), concluded that the standard for determining whether a
mark is primarily geographically deceptively misdescriptive
under the new Section 2(e)(3) of the Act is different from,
and more rigorous than, the standard for determining
registrability of the same types of marks under Section
2(e)(2) of the Act prior to the NAFTA amendment. The court
stated the following (at 1339):
Thus, § 1052 no longer treats geographically
deceptively misdescriptive marks differently from
geographically deceptive marks. … Accordingly, the
test for rejecting a deceptively misdescriptive
mark is no longer simple lack of distinctiveness,
but the higher showing of deceptiveness.
The court stated the following about the pre-NAFTA amendment
requirement for a goods-place association (at 1340):
Therefore, the relatively easy burden of showing a
naked goods-place association without proof that
the association is material to the consumer’s
decision is no longer justified, because marks
rejected under § 1052(e)(3) can no longer obtain
registration through acquired distinctiveness
under § 1052(f). To ensure a showing of
deceptiveness and misleading before imposing the
penalty of non-registrability, the PTO may not
deny registration without a showing that the
goods-place association made by the consumer is
material to the consumer’s decision to purchase
those goods. This addition of a materiality
inquiry equates this test with the elevated
standard applied under § 1052(a).
…
The shift in emphasis in the standard to identify
primarily geographically deceptively
misdescriptive marks under § 1052(e)(3) will bring
that section into harmony with § 1052(a).
Serial No. 78091743
4
The court articulated the following standard for determining
whether a mark is primarily geographically deceptively
misdescriptive (at 1341-1342):
Thus, due to the NAFTA changes in the Lanham Act,
the PTO must deny registration under § 1052(e)(3)
if (1) the primary significance of the mark is a
generally known geographic location, (2) the
consuming public is likely to believe the place
identified by the mark indicates the origin of the
goods bearing the mark, when in fact the goods do
not come from that place, and (3) the
misrepresentation was a material factor in the
consumer’s decision.
…
As 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). Consequently, this court anticipates that
the PTO will usually address geographically
deceptive marks under subsection (e)(3) of the
amended Lanham Act rather than subsection (a).
While there are identical legal standards for
deception in each section, subsection (e)(3)
specifically involves deception involving
geographic marks.
In the case before us, applicant and the Examining
Attorney, in their briefs, articulated the above-quoted
standard for determining whether a mark is primarily
geographically deceptively misdescriptive in connection with
the identified goods under Section 2(e)(3) of the Trademark
Act. In her brief, in view of the California Innovations
opinion, the Examining Attorney withdrew Section 2(a) of the
Act as a basis for the refusal to register. Thus, the only
issue remaining in this appeal is whether the Examining
Serial No. 78091743
5
Attorney has established that the mark herein is
unregistrable under Section 2(e)(3) of the Act.
The Examining Attorney contends that the primary
significance of US in applicant’s mark is geographic because
US is a commonly used abbreviation for United States,
whether it appears with or without periods, i.e., US or
U.S.3; that the term WEAR in the mark “does not avoid the
refusal … [and] this term has been disclaimed by the
applicant and is not at issue” [Brief, p. 4.]4; and that the
mark identifies a geographic location that is not remote or
obscure and, thus, there is a presumption of a goods-place
association. The Examining Attorney noted that applicant is
located in Canada and that applicant does not deny that its
goods originate in Canada.
Regarding the materiality of the geographic location to
the consumer’s decision to purchase the goods identified
herein, the Examining Attorney submitted excerpts of
articles from the LEXIS/NEXIS database about “American
clothing designers.” She contends that this evidence

3 The Examining Attorney submitted an excerpt from the American Heritage
Dictionary of the English Language (3rd ed. 1992) establishing that US
and U.S. are abbreviations for United States. Additionally, she
submitted the results of a Google search of the Internet (dated November
5, 2002), wherein US is used in a context clearly denoting United
States.
4 The Examining Attorney contends that the specimens of record also
support her position that the US portion of applicant’s mark will be
perceived as an abbreviation of United States rather than as the word
“us” because US is capitalized and only the initial letter of “Wear” is
capitalized on the specimen label, i.e., US Wear.
Serial No. 78091743
6
“reveal[s] examples of a wide variety of American clothing
designers” and that the evidence “was intended to show
examples of references to various companies that produce
clothing in the United States.” [Brief, p. 7.] She draws
the following conclusions [id.]:
Where specific goods such as clothing come from is
extremely important to buyers. Many consumers
will only purchase goods made in the United States
to support the local economy and to evoke a sense
of patriotism. Hence advertising campaigns such
as BUY AMERICAN and labels that indicate MADE IN
AMERICA, etc. Not only is the United States a
large producer of clothing but consumers are
likely to base their purchasing decision on the
fact that the clothing is made in the United
States.
Conversely, applicant contends that the primary
significance of the US portion of its mark is not
geographic; that US also means “us” (the objective case of
“we”), as evidenced by the dictionary definition submitted
by applicant; and that the primary significance of the
composite mark, US WEAR, is not geographic, contending that
the dominant portion of the mark is WEAR. Additionally,
applicant argues that the Examining Attorney has not
established that there is a goods/place association, that
the goods do not originate from the United States or that
the geographic origin of the goods would materially affect
the purchasing decision. With its brief, applicant
submitted excerpts from the web sites listed on the Google
search results submitted by the Examining Attorney to show
Serial No. 78091743
7
that the actual web sites used periods after each letter,
i.e., U.S., to abbreviate United States.
Whether Primary Significance of Mark is a Generally Known
Geographic Location
With regard to the first prong of the test, there is no
question that US is an abbreviation for “United States,”
which is the commonly recognized name of the United States
of America, wherein registration of this mark is sought; or
that this connotation will come to mind upon viewing the
mark. Both the Google search results and the dictionary
definition submitted by the Examining Attorney establish
these facts. We are not persuaded otherwise by applicant’s
argument that the US portion of its mark US WEAR may also be
perceived as the word “us” and, thus, it is not primarily
geographic in connotation; or that the letters “U” and “S”
must be followed by periods, i.e., U.S., for US to be
recognized as an abbreviation of United States.
Further, we conclude that coupling this geographic term
with the additional term, WEAR, does not detract from the
primary geographic significance of the composite mark. See
In re Bacardi & Company Limited, 48 USPQ2d 1031 (TTAB 1997);
and In re Chalk’s International Airlines Inc., 21 USPQ2d
1637, 1639 (TTAB 1991). As the Board has stated in the
past, the determination of registrability under Section
2(e)(3) [previously, Section 2(e)(2)] should not depend on
whether the mark is unitary or composite. See In re
Serial No. 78091743
8
Cambridge Digital Systems, 1 USPQ2d 1659, 1662 (TTAB 1986).
Applicant gives no explanation for its conclusion that WEAR
is the dominant portion of applicant’s mark and we find that
the merely descriptive term, while clearly part of the
composite mark, does not detract from the geographic
significance of the mark as a whole.
To summarize, the primary significance of the composite
mark US WEAR is a generally known geographic location.
Goods/Place Association
We turn, next, to the question of whether purchasers
are likely to believe the place identified by the mark
indicates the origin of the goods bearing the mark, when in
fact the goods do not come from that place.5 We answer that
question in the affirmative.
The following are excerpts from several of the articles
from the LEXIS/NEXIS database submitted by the Examining
Attorney:
On behalf of the Fashion Institute of Technology,
Mrs. Lee edited “American Fashion: The Life and
Times of Adrian, Mainbocher, McCardell, Norell,
Trigere,” a compilation of mid-century American
clothing designers, published by the New York
Times in 1975. [The New York Times, May 12,
2001.]

5 Applicant is a Canadian company located in Quebec, Canada. Contrary
to applicant’s statement in its brief that the filing was based on
Section 1(b) of the Act, the application is based on use in a type of
commerce regulable by Congress. In view of these facts, we can only
conclude that the goods originate in Canada, and applicant does not
contend otherwise.
Serial No. 78091743
9
A dozen blocks from the bright lights and big-city
style of Bryant Park, where American clothing
designers are showing their fall 2001 collections
this week, novice designer Andrew Harmon was
dealing with his own fashion dilemma. [The Boston
Herald, February 14, 2001.]
Nautica is negotiating with 666 Fifth Ave. for a
location for its flagship store. By landing the
popular American clothing designer to fill a
23,000-square-foot space, the building’s owner …
would cap off an $18 million makeover of the
office tower’s retail space and lobby. [Crain’s
New York Business, January 19, 1998.]
… Keds, an American footwear classic in basic
colors and styles with a reputation for being
durable, washable and comfortable. This year the
company, a division of Stride Rite Corp., decided
to shake up its stolid image by letting American
clothing designers have their way with the
sneakers. The Keds Salutes Great American Design
program began this fall with Todd Oldham.
[Chicago Tribune, October 9, 1997.]
We find sufficient evidence herein to conclude that a
goods/place association is likely to be made by purchasers
between US, a common abbreviation of United States, and the
clothing products identified in this application. Thus,
purchasers are likely to believe that the clothing products
sought to be registered in connection with the mark herein
originate in the United States. Further, applicant concedes
that clothing is designed and manufactured in the United
States (Brief, p. 9).6

6 Applicant argues that the Examining Attorney has not established that
the United States is well known for its clothing industry, or for the
manufacture of the clothing identified in the application. However,
such a showing is unnecessary to establish a goods/place association.
Serial No. 78091743
10
Materiality of Geographic Misrepresentation to Purchasing
Decision
While the Examining Attorney has stated her opinion
that the origin in the United States of the goods herein,
and consumer products in general, is an important factor in
the decision to purchase such goods, she has presented no
evidence in support of these statements. Nor has the
Examining Attorney established that the United States is
well known or renowned for the products in this case, which
would support a finding of materiality. See In re
California Innovations, Inc., supra at 1341, citing In re
House of Windsor, 221 USPQ 53 (TTAB 1983). We have
absolutely no basis upon which to conclude that the
geographic origin of the identified goods, or the
misrepresentation thereof, is a material factor in the
consumer’s decision to purchase those goods.
Therefore, we conclude that the Examining Attorney has
established that the primary significance of the mark US
WEAR is a generally known geographic location, and the
consuming public is likely to mistakenly believe that the
place identified by the mark, the United States, indicates
the origin of the goods bearing the mark. However, the
Examining Attorney has not established the third necessary
factor, that the misrepresentation is a material factor in a
consumer’s purchasing decision. In conclusion, the
Examining Attorney has not established that US WEAR is
Serial No. 78091743
11
primarily geographically deceptively misdescriptive, under
Section 2(e)(3) of the Act, in connection with the
identified goods.
Decision: The refusal under Section 2(e)(3) of the Act
is reversed.