Glaze Inc.

Trademark Trial and Appeal Board

Mar 17, 2005

No. 76565437 (T.T.A.B. Mar. 17, 2005)

Mailed:
17 March 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Glaze Inc.
________

Serial No. 76565437
_______

Myron Amer of Myron Amer, P.C. for Glaze Inc.

Douglas M. Lee, Trademark Examining Attorney, Law Office
108 (Dave Shallant, Managing Attorney).
_______

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

Opinion by Drost, Administrative Trademark Judge:

On December 3, 2003, Glaze Inc. (applicant) applied to
register the mark SWISSCELL (in typed form) on the
Principal Register (Serial No. 76565437) for goods
ultimately identified as “batteries for lighting, battery
chargers and surge protectors” in Class 9 based on
applicant’s assertion of a bona fide intention to use the
mark in commerce.
The examining attorney (Brief at 2) has refused to
register the mark on the ground that the mark “consists of
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser. No. 76565437
2
or comprises geographically deceptively misdescriptive
matter under Section 2(e)(3) of the Trademark Act in
relation to batteries for lighting.” 15 U.S.C.
§ 1052(e)(3).1
The examining attorney argues that “applicant concedes
that its goods are not manufactured or produced in
Switzerland. The general public is likely to believe that
applicant’s batteries come from this place because
Switzerland is a country where batteries are designed or
manufactured. Furthermore, this belief would materially
influence consumers to purchase these goods because
batteries manufactured in Switzerland have a reputation for
high quality.” Brief at 2-3 (citation to record omitted).
In support of his position, the examining attorney
submitted pages from five websites.
The first website pages are from www.73.com
(Surplustraders.net) and they refer to a product identified
as a lithium battery made by “Renata in Switzerland.” The
product description begins with the line “Swiss
Manufactured Cells!” and includes the sentence, “These

1 In his final Office action at 1, the examining attorney made it
clear that “[i]n regard to the batteries for lighting only, the
refusal … is now made FINAL.”
Ser. No. 76565437
3
batteries are of Swiss manufacture and represent the
highest standards…”
The second website (www.anytimewholesale.com) is the
site of a wholesale supplier of “Renata Watch Batteries.
Widely regarded as one of the highest quality watch
batteries in the world, these Swiss manufactured batteries
will bring instant name recognition and prestige to your
business.”
The third website page (www.buyershaven.com) contains
the following sentence: “RENATA zinc air batteries for
hearing instruments feature Swiss quality and consistently
great performance.”
The fourth website is the Renata site (www.renata.com)
and it lists Renata products, e.g., watch, calculator,
hearing aid, and lithium batteries, referred to in the
previous websites. It includes the phrase “the swiss power
source.”
The last website (www.pageonetrading.com) discusses a
battery for a car. “‘Zebra’ batteries made by MES-DEA in
Switzerland, are more expensive than most lead-acid
batteries, but have substantial advantages for hybrid
vehicles.”
In addition to these websites, the examining attorney
has included definitions of the terms “Swiss” (“of or
Ser. No. 76565437
4
relating to Switzerland or its people or culture” and
“cell” (“a single unit for electrolysis or conversion of
chemical energy, usually consisting of a container with
electrodes and an electrolyte”).
Applicant has put in seven dictionary definitions for
Swiss Chard, Swiss Cheese, Swiss Franc, Swiss Guards, Swiss
Muslin, Swiss Roll, and Swiss Steak, and argues that
several of these definitions do not have geographical
connotations. In addition, it maintains (Reply Brief at 2)
that the examining attorney’s “excerpts made of record are
concerned with batteries, but not batteries FOR LIGHTING.”
Finally, “[c]onsidered in its entirety, the word SWISS is
in combination with the word CELL, and applicant argues it
is without geographic significance.” Brief at 3.
The Trademark Act (15 U.S.C. § 1052(e)(3)) provides
that:
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, … (3) when used on or in connection with
the goods of the applicant is primarily geographically
deceptively misdescriptive of them.

The Federal Circuit has held that because of the
Ser. No. 76565437
5
North American Free Trade Agreement (NAFTA),2 the test for
whether a term may properly be refused registration on the
ground that it is primarily geographically deceptively
misdescriptive has changed.
Prior to NAFTA, “this court required a geographically
deceptively misdescriptive mark to have more than merely a
primary geographic connotation. Specifically, the public
must also associate the goods in question with the place
identified by the mark – the goods-place association
requirement. However, this court did not require a
showing that the goods-place association was material to
the consumer’s decision before rejection under §1052(e).”
In re California Innovations Inc., 329 F.3d 1334, 66
USPQ2d 1853, 1855 (Fed. Cir. 2003). With the NAFTA
changes, the Federal Circuit held that the above test was
no longer applicable.
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.

2 North American Free Trade Agreement, Dec. 17, 1992, art.
1712, 32 Int’l Leg. Mat. 605, 675-676 (1993), as
implemented by the NAFTA Implementation Act in 1993, see
NAFTA Implementation Act, Pub. L. No. 103-182, § 333, 107
Stat. 2057 (1993).
Ser. No. 76565437
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Id. at 1858.3 See also In re Les Halles de Paris J.V., 334
F.3d 1371, 67 USPQ2d 1539, 1541 (Fed. Cir. 2003) (“While
California Innovations involved a mark to identify the
source of goods, the analysis under Section 2(e)(3)
applies to service marks as well”).
Therefore, we analyze the facts of this case under
the three factors set out above.
The first factor is whether the primary legal
significance of the mark is a generally known geographic
location. Applicant’s mark is the term SWISSCELL (typed).
“Swiss,” as the dictionary definition indicates, is
recognized as a term meaning “of or relating to
Switzerland and its people or culture” and we have little
trouble determining that it is a generally known
geographic term. The other term “cell” is a highly
descriptive or generic term for various types of
batteries. See www.73.com (“7.2 volt strip packs … cell
packs made from NEC. Consist of seven cells in a row, in
series;” “Ray-O-Vac BR2016 3V 70MAH Coin Cells;” “Lithium
Coin Cells”). The addition of the highly descriptive word
“cell” to the term “Swiss” does not take away from the

3 The Court held that whether marks are primarily geographically
deceptively misdescriptive or deceptive (§§ 2(e)(3) and 2(a)) are
determined under “identical legal standards.” California
Innovations, 66 USPQ2d at 1858.
Ser. No. 76565437
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obvious geographic descriptiveness of the word “Swiss.”
See In re Save Venice New York, Inc., 259 F.3d 1346, 59
USPQ2d 1778 (Fed. Cir. 2001) (Composite mark consisting of
the phrases “THE VENICE COLLECTION” and “SAVE VENICE INC.”
and an image of the winged Lion of St. Mark primarily
geographically deceptively misdescriptive); In re Wada,
194 F.3d 1297, 52 USPQ2d 1539, 1542 (Fed. Cir. 1999) (“NEW
YORK WAYS GALLERY is primarily geographically deceptively
misdescriptive”). Therefore, we find that the primary
significance of applicant’s mark would be a generally
known geographic location.
The second factor is whether the consuming public is
likely to believe that the goods come from the place
identified. In California Innovations, 66 USPQ2d at 1859,
the Court held that:
A great deal of the evidence cited in this case
relates to the fashion industry, which is highly
prevalent in California due to Hollywood’s influence
on this industry. However, clothing and fashion have
nothing to do with the products in question. At
best, the record in this case shows some general
connection between the state of California and
backpacks and automobile organizers. However,
because CA Innovations has limited its appeal to
insulated bags and wraps, the above referenced
evidence is immaterial.

In this case, there is one battery company identified
as a Swiss company (Renata) on four different websites and
there is an additional website that indicates that there
Ser. No. 76565437
8
is a vehicle battery company (MES-DEA) in Switzerland.
While the type of batteries offered by Renata does not
seem to include batteries for lighting, there is at least
some evidence that some batteries come from Switzerland.
We also take judicial notice4 of the fact that:
“Switzerland is a prosperous and stable modern market
economy with low unemployment, a highly skilled labor
force, and a per capita GDP larger than that of the big
Western European economies.” Central Intelligence Agency,
The World Factbook, www.cia.gov/cia/publications/factbook.
Even when we view the evidence that perhaps two Swiss
companies make different type of batteries and that
Switzerland is a country with a prosperous and stable
market economy, we hold that, as in California
Innovations, 66 USPQ2d at 1859, this is tenuous evidence
that purchasers would expect batteries for lighting to
come from Switzerland.
The Government contends that the evidence shows some
examples of a lunch bag, presumed to be insulated,
and insulated backpacks. According to the
government, the evidence supports a finding of a
goods-place association between California and
insulated bags and wraps. This court has reviewed
the publications and listings supplied by the
examining attorney. At best, the evidence of a

4 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).
Ser. No. 76565437
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connection between California and insulated bags and
wraps is tenuous.

The evidence of a goods or services/place
relationship is certainly much weaker than what was
present in our recent In re Consolidated Specialty
Restaurants Inc. case. 71 USPQ2d 1921 (TTAB 2004). In
that case, “the gazetteer and geographic dictionary
entries, the USDA report, the evidence from the Internet
and the excerpted stories retrieved from the Nexis
database show that the state of Colorado is known for its
steaks” and that “‘Colorado Steaks’ are featured food
items in restaurants not only within the state of Colorado
but outside the state as well.” 71 USPQ2d at 1927. In
contrast, here the evidence of a goods/place association
consists of a single battery company (Renata) and another
company that makes vehicle batteries. Under the stricter
California Innovations standards, we are constrained to
find that the examining attorney has not established the
required goods/place association between Switzerland and
batteries for lighting.
Finally, inasmuch as applicant’s batteries for
lighting do not come from Switzerland, we must consider
whether this misrepresentation would be a material factor
in the consumer’s decision. The Federal Circuit has
Ser. No. 76565437
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discussed some of the evidence that would support a
finding of materiality, relying on § 2(a) case law:
“[I]f there is evidence that goods like applicant’s
or goods related to applicant’s are a principal
product of the geographical area named by the mark,
then the deception will most likely be found material
and the mark, therefore, deceptive.” [In re House of
Windsor, Inc., 221 USPQ 53, 57 (TTAB 1983)]. “[I]f
the place is noted for the particular goods, a mark
for such goods which do not originate there is likely
to be deceptive under §2(a) and not registrable under
any circumstances.” [In re Loew’s Theatres, Inc.,
769 F.2d 764, 226 USPQ 865, 868 n.6 (Fed. Cir.
1985)].

California Innovations, 66 USPQ2d at 1857.
In this case, the evidence falls far short of
demonstrating that batteries are a principal product of
Switzerland nor does the evidence show that Switzerland is
noted for batteries for lighting. The few references in
the retailers’ advertisements to “Swiss quality” and
“Swiss manufacture” in relation to the Renata batteries do
not show that prospective purchasers’ decisions would be
materially influenced by the term “Swiss” when purchasing
batteries for lighting.
In addition, the Federal Circuit has noted that to
“raise an inference of deception or materiality for a
service mark, the PTO must show some heightened
association between the services and the relevant
geographic denotation.” Les Halles, 67 USPQ2d at 1542.
Ser. No. 76565437
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Considering this “heightened association” in the context
of the involved goods, we do not see that the evidence
here shows any heightened association. The evidence of
record on the association between Switzerland and
batteries of any kind is weak. It would hardly be
surprising that a country produces batteries locally
rather than simply importing all of its batteries.
The only other evidence that could indicate that the
term “Swiss” may materially impact purchasing decisions is
the nebulous references to “Swiss quality.” There is
simply insufficient evidence to hold that the term “Swiss”
applied to virtually any product materially influences
purchasers. Indeed, we add that the Second Circuit has
held that “the phrase Swiss Army knife cannot fairly be
read to say ‘made in Switzerland’ so as to be
geographically descriptive.” Forschner Group Inc. v.
Arrow Trading Co. Inc., 30 F.3d 348, 31 USPQ2d 1614, 1619
(2d Cir. 1994).
Therefore, we conclude that the term SWISSCELL is not
primarily geographically deceptively misdescriptive for
batteries for lighting.
Decision: The examining attorney’s refusal under
Section 2(e)(3) is reversed.