Ghent Mfg., Inc.

Trademark Trial and Appeal Board

Oct 11, 2000

No. 75450847 (T.T.A.B. Oct. 11, 2000)

Paper No. 10
Bottorff
10/11/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Ghent Manufacturing, Inc.
________
Serial No. 75/450,847
_______
David Josephic of Wood, Herron & Evans, LLP for Ghent
Manufacturing, Inc.
Mary Boagni, Trademark Examining Attorney, Law Office 114
(Margaret Le, Managing Attorney)
_______
Before Simms, Chapman and Bottorff, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
On March 16, 1998, applicant, an Ohio corporation,
filed an application by which it seeks registration on the
Principal Register of the mark LINEA ITALIA for goods
identified in the application, as amended, as “furniture,
namely, mobile and stationary computer workstations
comprised of shelving, storage and filing systems for
computer peripherals, keyboard platforms, computer hardware
and computer software.” According to the application,
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/450,847
2
LINEA ITALIA translates into English as ITALY LINE.
Applicant has disclaimed the exclusive right to use LINEA
apart from the mark as shown.
The Trademark Examining Attorney initially refused
registration on the ground that applicant’s mark is either
primarily geographically descriptive of applicant’s goods
and thus barred from registration under Trademark Act
Section 2(e)(2), 15 U.S.C. §1052(e)(2), or else it is
primarily geographically deceptively misdescriptive of
applicant’s goods and thus barred from registration under
Trademark Act Section 2(e)(3).1 In its response to the
initial office action, applicant stated that its goods do
not originate in Italy. The Trademark Examining Attorney
then withdrew the Section 2(e)(2) refusal, but made her
Section 2(e)(3) refusal final. Applicant requested
reconsideration, but the Trademark Examining Attorney

1 Trademark Act Section 1052(e) provides, in relevant part, as
follows:
No trademark by which the goods of the applicant may be
distinguished from the goods of others shall be refused
registration on the principal register on account of its
nature unless it –
(e) Consists of a mark which, … (2) when used on or in
connection with the goods of the applicant is primarily
geographically descriptive of them …, [or] (3) when used
on or in connection with the goods of the applicant is
primarily geographically deceptively misdescriptive of
them …
Ser. No. 75/450,847
3
maintained her final refusal. Applicant then filed this
appeal.
Applicant and the Trademark Examining Attorney filed
main briefs; applicant did not file a reply brief, nor did
applicant request an oral hearing. We have carefully
considered all of the evidence of record and the arguments
made by applicant and by the Trademark Examining Attorney.
We find that the Trademark Examining Attorney has
established a prima facie case in support of her primarily
geographically deceptively misdescriptiveness refusal, and
that applicant has failed to rebut that prima facie case.
Accordingly, we affirm the refusal to register.
“Whether a mark is primarily geographically
deceptively misdescriptive … requires an analysis under a
two prong test to establish (1) whether the primary
significance of the mark as it is used is a generally known
geographic place; and (2) whether the public would make a
‘goods/place association,’ i.e., believe that the goods for
which the mark is sought to be registered originate in that
place.” Institut National Des Appellations D’Origine v.
Vintners Int’l Co., 958 F.2d 1574, 22 USPQ2d 1190, 1195
(Fed. Cir. 1992). See also In re Nantucket, Inc., 677 F.2d
95, 213 USPQ 889 (CCPA 1982).
Ser. No. 75/450,847
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We find that the Trademark Examining Attorney has
established, prima facie, the first prong of her refusal,
i.e., that the primary significance of applicant’s mark
LINEA ITALIA is that of a generally known geographic place.
ITALIA is Italian for ITALY, as is shown by the geographic
dictionary evidence made of record by the Trademark
Examining Attorney2 and by applicant’s own translation of
the mark in the application. As applicant has
acknowledged3, ITALIA or ITALY is, of course, a “large,
well-known country” which is neither obscure nor remote.
Applicant’s translation statement also shows that
LINEA is Italian for LINE. The Trademark Examining
Attorney has presented evidence showing that “line” is
defined, inter alia, as “merchandise or services of a
similar or related nature: carries a complete line of small
tools.”4 She also has submitted evidence from the NEXIS
automated database showing use of “line” in this manner in
conjunction with “furniture,” e.g.: “…the latest outdoor
furniture lines”5; “[h]e describes his furniture line as

2 Webster’s New Geographical Dictionary (1988), p.556.
3 August 26, 1999 request for reconsideration, p.2.
4 The American Heritage Dictionary of the English Language (3d
Ed. 1992).
5 Asheville [NC] Citizen-Times, March 6, 1999.
Ser. No. 75/450,847
5
‘the rustic chic collection’…”6; and “Ethan Allen just
announced plans to launch a children’s furniture line….”7
Based on this evidence, we find that LINEA or LINE, as
it is used in applicant's mark and in conjunction with
applicant’s goods, is a generic or highly descriptive
designator which is devoid of any source-indicating
significance. Its presence in applicant’s mark LINEA
ITALIA does not detract from or negate the primarily
geographic significance of the mark. See In re Compagnie
Generale Maritime, 993 F.2d 841, 26 USPQ2d 1652 (Fed. Cir.
1993)(FRENCH LINE found to be primarily geographic as
applied to numerous goods and services). See generally In
re California Pizza Kitchen Inc., 10 USPQ2d 1074 (TTAB
1988); In re Cambridge Digital Systems, 1 USPQ2d 1659 (TTAB
1986).
For the reasons discussed above, we find that the
primary significance of applicant’s mark LINEA ITALIA is
that of a generally known geographic place, i.e., Italy,
and that the Trademark Examining Attorney has established
this first prong of the Section 2(e)(3) refusal.

6 Richmond Times Dispatch, March 6, 1999.
7 The New York Post, February 28, 1999.
Ser. No. 75/450,847
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We also find that the Trademark Examining Attorney has
made a prima facie showing on the second prong of the
Section 2(e)(3), i.e., that purchasers are likely to make a
goods/place association between the place named in the
mark, i.e., Italy, and the goods identified in the
application, i.e., “furniture, namely, mobile and
stationary computer workstations comprised of shelving,
storage and filing systems for computer peripherals,
keyboard platforms, computer hardware and computer
software.” (As noted above, applicant has conceded that
its goods do not originate from Italy, the geographic place
named in its mark.)
The Trademark Examining Attorney has submitted
numerous excerpts of news articles obtained from the NEXIS
automated database which, we find, establish the requisite
goods/place association between furniture, including
computer workstation furniture, and Italy.8 Inter alia,

8 The Trademark Examining Attorney performed various searches in
the NEXIS database:
The search ITALY W/2 FURNITURE yielded 373 hits in the
ALLNEWS library, 8 of which were printed and made of
record;
The search (ITAL! PRE/1 DESIGN!) W/2 FURNITURE yielded 39
hits in the US file of the NEWS library, 27 of which were
printed and made of record;
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these articles informed their readers: that Italy’s
contemporary furniture industry is generally regarded as
the world leader (Crain’s New York Business, May 27, 1991);
that Italy’s new furniture sales increased from $16.8
billion in 1997 to $18 billion in 1998 (The New York Times,
April 22, 1999); that the United States is the second-
largest customer (after Germany) for Italian-made
furniture, having imported $972 million worth in 1998
(id.); and that Italy is the third-largest exporter (behind
China and Canada) of office furniture to the United States
(The Wall Street Journal, June 18, 1999). The Trademark
Examining Attorney also has submitted printouts of the

The search FURNITURE FROM ITALY yielded 100 hits in the US
file of the NEWS library, 9 of which were printed and made
of record;
The search FURNITURE W/7 “MADE IN ITALY” yielded 17 hits in
the US file of the NEWS library, 9 of which were printed
and made of record;
The search ITALIAN MADE W/2 FURNITURE yielded 10 hits in
the US file of the NEWS library, 5 of which were printed
and made of record;
The search (WORKSTATION W/5 COMPUTER) W/30 ITAL! yielded 68
hits in the US file of the NEWS library, 9 of which were
printed and made of record;
The search ITALY W/10 NEW FURNITURE yielded 10 hits in the
US file of the NEWS library, 2 of which were printed and
made of record; and
The search ITALY W/10 CONTEMPORARY FURNITURE yielded 13
hits in the US file of the NEWS library, 5 of which were
printed and made of record.
Ser. No. 75/450,847
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Internet websites of several Italian manufacturers of
computer workstation furniture.
We find that the evidence submitted by the Trademark
Examining Attorney is more than sufficient to establish,
prima facie, that purchasers would assume a goods/place
association between the place named in applicant’s mark and
the goods identified in applicant’s application. Thus, for
the reasons discussed above, we conclude that the Trademark
Examining Attorney has made out a prima facie case in
support of both prongs of her Section 2(e)(3) refusal.
We turn next to a consideration of whether applicant
has rebutted the Trademark Examining Attorney’s prima facie
showing under Section 2(e)(3). In its response to the
first office action, applicant submitted a listing of
third-party registrations which, applicant contends, show
that ITALY or ITALIA is extensively used by third parties
in marks covering a wide variety of goods and services. As
noted by the Trademark Examining Attorney, however, those
purported third-party registrations were never properly
made of record, and we accordingly give them no
consideration. See In re Pan-O-Gold Baking Co., 20 USPQ2d
1761, 1763 at n.7 (TTAB 1991); In re Duofold Inc., 184 USPQ
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638, 640 (TTAB 1974).9 Thus, the only evidence of record
from applicant is a single third-party registration, of the
mark PATINA ITALIA for “new, hand-painted furniture,” which
applicant submitted with its request for reconsideration.10
We find that applicant’s evidence, which consists of
the fact that the third-party registration of PATINA ITALIA
for “new, hand-painted furniture” was issued on the
Principal Register without resort to Section 2(f) or a
disclaimer, is insufficient to rebut the Trademark
Examining Attorney’s prima facie case under Section
2(e)(3). We are not privy to the contents of that
application file, nor are we bound by the reasoning or the
conclusions of the Trademark Examining Attorney who passed
that mark to publication. In re National Novice Hockey
League, Inc., 222 USPQ 638, 641 (TTAB 1984); In re
Scholastic Testing Service, Inc., 196 USPQ 517 (TTAB 1977).
Likewise, we are not persuaded by any of applicant’s
legal arguments in opposition to the Section 2(e)(3)

9 However, even if the listed third-party registrations had
properly been made of record, our decision would be unchanged.
As discussed more fully, infra, the factual and legal conclusions
applicant would have us draw from these third-party registrations
are unwarranted.
10 Registration No. 2,000,122, issued September 10, 1996. The
printout submitted by applicant was obtained from a commercial
search company rather from PTO records, but the Trademark
Examining Attorney has treated it as being of record, and so
shall we.
Ser. No. 75/450,847
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refusal. Applicant argues that because purchasers are
aware that a wide variety of goods and services originate
in or from Italy, it is “overreaching” to assume that
purchasers would make a goods/place association between
Italy and the particular goods identified in the
application. This contention has no basis in the evidence
of record11 nor in the law. In re Venice Maid Co., Inc.,
222 USPQ 618 (TTAB 1984), cited by applicant, does not
stand for the proposition that when the place named in the
mark is a large city (or country) which presumably could be
the source of a wide variety of goods and services, no
goods/place association between a place and a particular
product can be assumed. Rather, the Board’s decision in
that case was expressly based on the absence of evidence
sufficient to establish the requisite goods/place
association between the place and the particular goods.
Id. at 619. No such lack of evidence exists in the present
case.

11 In support of its factual contention that purchasers are aware
that a wide variety of goods and services originate in Italy,
applicant relies on its listed third-party registrations which,
as discussed above, are not part of the evidentiary record in
this case. Moreover, third-party registrations are not, in
themselves, evidence that the marks depicted therein are in use
or that the public is aware of them. See, e.g., Olde Tyme Foods
Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir.
1992).
Ser. No. 75/450,847
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Applicant also argues that the primary significance of
its mark is not geographic, but rather that its mark is a
fanciful, arbitrary term as applied to applicant’s goods.
It is true that “if there be no connection of the
geographical meaning of the mark with the goods in the
public mind, that is, if the mark is arbitrary when applied
to the goods, registration should not be refused” on the
ground that the mark is primarily geographically
deceptively misdescriptive. In re Nantucket, Inc., supra,
213 USPQ at 893. However, as discussed above, the evidence
of record in this case shows that consumers are likely to
assume that a connection exists between the country of
Italy and a line of furniture of the type identified in the
application. The existence of that goods/place association
belies applicant’s claim that its mark is arbitrary as
applied to its goods.12
Finally, applicant argues that the primary
significance of LINEA ITALIA is not geographic because, as
applied to applicant’s goods, the mark conveys or
identifies a characteristic design style i.e., “Italian

12 The existence of a goods/place association also distinguishes
this case from the case cited and relied on by applicant,
National Lead Co. v. Wolfe, 223 F.2d 195, 105 USPQ 462 (9th Cir.
1955), cert. denied 350 U.S. 883 (1955), in which the mark DUTCH
BOY was found not to be primarily geographically descriptive for
paint.
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Style” or “Italian-European Style.” Again, however,
applicant’s contention is not supported by the record.
Applicant has not identified, and we have not found, any
evidence in the record which establishes that there is a
style of furniture which, regardless of its geographic
origin, would be referred to by purchasers as “Italian
Style” or “Italian-European Style.” See In re Wada, 194
F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999), aff’g 48 USPQ2d
1689 (TTAB 1998)(Section 2(e)(3) refusal of NEW YORK WAYS
GALLERY appropriate in absence of any evidence showing a
“New York style” of the goods at issue).
In summary, we find that applicant has failed to rebut
the Trademark Examining Attorney’s prima facie showing that
applicant’s mark is primarily geographically deceptively
misdescriptive of the goods identified in the application,
and we accordingly conclude that refusal under Section
2(e)(3) is warranted.
Decision: The refusal to register is affirmed.
R. L. Simms
B. A. Chapman
C. M. Bottorff
Administrative Trademark Judges
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Trademark Trial and Appeal Board