Grade-A-Global LLC

Trademark Trial and Appeal Board

Jun 16, 2020

88003141 (T.T.A.B. Jun. 16, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 16, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Grade-A-Global LLC
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Serial No. 88003141
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Thomas W. Galvani of Thomas W. Galvani PC,
for Grade-A-Global LLC.
Daniel F. Capshaw, Trademark Examining Attorney, Law Office 110,
Chris A.F. Pedersen, Managing Attorney.
_____

Before Cataldo Ritchie and Johnson,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:
Applicant, Grade-A-Global LLC, seeks registration on the Principal Register of
the mark KOTA JAPAN (in standard characters) identifying “hand-operated
sharpening tools and instruments; whetstones,” in Class 8.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(e)(3) of the Trademark Act, 15 U.S.C. § 1052(e)(3), on the ground that

1 Application Serial No. 88003141 was filed on June 15, 2018 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and
first use in commerce since at least as early as November 2017. The application originally
identified additional goods in Class 21. These subsequently were deleted by Applicant.
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the mark KOTA JAPAN is primarily geographically deceptively misdescriptive.
According to the Examining Attorney, Japan is a country known, inter alia, for
sharpening instruments and whetstones, and because Applicant’s goods do not
originate from Japan, the mark is primarily geographically deceptively
misdescriptive. When the refusal was made final, Applicant appealed. We affirm the
refusal to register.
The elements of whether a mark is primarily geographically deceptively
misdescriptive are set forth in In re Miracle Tuesday LLC, 695 F.3d 1339,
104 USPQ2d 1330, 1332 (Fed. Cir. 2012). See also In re Cal. Innovations Inc., 329
F.3d 1334, 66 USPQ2d 1853, 1858 (Fed. Cir. 2003):
1. Is “the primary significance of the mark … a generally known geographic
location?”
2. Is “the consuming public … 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. Would “the misrepresentation [be] a material factor in the consumer's decision”
to purchase the goods?
Id. at 1332 (quoting In re Cal. Innovations, Inc., 66 USPQ2d at 1856); see also In re
Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1746 (TTAB 2014).
I. Is the primary significance of KOTA JAPAN a generally known
geographic location?
There is no record evidence that the term KOTA has any meaning. The Examining
Attorney further states in his brief that “KOTA is distinctive matter with no clear
Serial No. 88003141
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meaning.”2 The Examining Attorney submitted the following evidence to show that
“Japan” is a generally known geographic location:
• American Heritage Dictionary of the English Language Fifth Ed. (2018)
(ahdictionary.com), identifies Japan as “a country consisting of an
archipelago off the eastern coast of Asia.”3
• The Columbia Gazetteer of the World lists Japan as a republic with a
population of over 127 million with the highest per capita income of all
Asian countries.4
• The website for the U.S. Department of State (state.gov) provides the
following information: “Japan is one of the world’s most successful
democracies and largest economies. The U.S. – Japan Alliance is the
cornerstone of U.S. security interests in Asia and is fundamental to regional
stability and prosperity.”5 and
• The website for the Office of the United States Trade Representative
(ustr.gov) provides the following information: “Japan is currently our 4th
largest goods trading partner with $217.6 billion in total (two way) goods
trade during 2018.”6

2 Examining Attorney’s brief; 6 TTABVUE 6. The Examining Attorney’s speculative
argument (Id. n.3) that the term KOTA in the involved mark is evocative of the Japanese city
of Kyoto is unsupported by evidence that consumers would make such an association.
3 October 5, 2018 first Office Action at TSDR 59.
4 April 26, 2019 final Office Action at TSDR 244-254.
5 Id. at 204-207.
6 Id. at TSDR 208-210.
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As discussed above, the term KOTA has no known meaning on this record and it
is unclear what, if any, significance consumers will ascribe to the term. On the other
hand, the record evidence shows that JAPAN is hardly an obscure place to reasonably
informed consumers in the United States, but rather denotes a well-known
geographic location. See In re Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865, 868
(Fed. Cir. 1985) (finding that Durango, Mexico is not an obscure place to reasonably
informed non-Mexicans). Cf. In re Compania de Licores Internacionales S.A., 102
USPQ2d 1841, 1844 (TTAB 2012) (“A mark is not primarily geographic where the
geographic meaning is obscure, minor, remote, or not likely to be connected with the
goods.”). Indeed, the evidence shows JAPAN is a modern, populous democracy with
one of the world’s largest economies, and also is a key ally in Asia and a leading
trading partner to the United States.
Applicant argues:
The Examining Attorney focuses heavily on the word JAPAN, arguing
that the addition of the term KOTA “does nothing to create a non-
geographic meaning.” Applicant respectfully submits that the
Examining Attorney’s analysis is misplaced and is more proper in an
analysis pursuant to Section 2(a). Under Section 2(a), the focus is on the
deceptive matter within the mark, rather than the mark itself. …
However, under Section 2(e)(3), the focus is on the entire mark. To base
a Section 2(e)(3) analysis on a single element in the mark, imbue
meaning into the whole mark from that element, and then analyze the
remaining elements in light of that meaning is “to ignore the distinction
drawn in the statute between the focus of Sections 2(a) (“[c]onsists of or
comprises . . . deceptive . . . matter”) and 2(e)(3) (“[c]onsists of a mark”).
Morinaga. Thus, to preserve a distinction between Sections 2(a) and
2(e)(3) and not render 2(a) superfluous, the analysis m[u]st focus on the
mark as a whole.

Serial No. 88003141
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Applicant is correct that our analysis of geographic deception under Section 2(e)(3)
must focus on the entire mark.7 However, it is not necessary for every component of
a mark to be geographically deceptive in order to satisfy the first part of the test
under Section 2(e)(3) articulated in Cal. Innovations. See, e.g., In re Save Venice New
York Inc., 259 F.3d 1346, 59 USPQ2d 1778 (Fed. Cir. 2001) (THE VENICE
COLLECTION and SAVE VENICE INC. with an image of the winged Lion of St.
Mark, for various goods, held primarily geographically deceptively misdescriptive of
products that do not originate in Venice, Italy); In re Wada, 194 F.3d 1297, 52
USPQ2d 1539 (Fed. Cir. 1999) (NEW YORK WAYS GALLERY, with a disclaimer of
NEW YORK, held primarily geographically deceptively misdescriptive of backpacks,
handbags, purses, and similar items); In re Bacardi & Co. Ltd., 48 USPQ2d 1031
(TTAB 1997) (HAVANA SELECT, HABANA CLASICO, OLD HAVANA, HAVANA
PRIMO, and HAVANA CLIPPER primarily geographically deceptively
misdescriptive of rum); In re Perry Mfg. Co., 12 USPQ2d 1751 (TTAB 1989) (PERRY
NEW YORK and design, with a disclaimer of NEW YORK, held deceptive for various
items of clothing that originate in North Carolina, and have no connection with New
York, because of the renown of New York in the apparel industry).
Applicant further argues:
Inclusion of a distinctive term in combination with a geographic term
will operate to prevent the mark from having a primary significance that

7 The Federal Circuit in Cal. Innovations held that 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).” Id.
Serial No. 88003141
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is geographic. See Morinaga, 120 USPQ2d at 17[4]8. Here, not only is
the term distinctive, but it is fanciful. The inclusion of the dominant,
fanciful, undefined term KOTA, together with the non-dominant
geographic term JAPAN, renders the mark, as a whole, fanciful and
without meaning. A fanciful mark by definition has no meaning, and so
the mark’s primary significance is one of no meaning.

The facts in Morinaga are distinguishable from those of the present application.
In Morinaga, the Board found that the term SEATTLE in the mark
“plays a relatively minor role visually, but more importantly, it is part of the phrase
THE MOUNTAIN OF SEATTLE, which appears at the base of a mountain, all of
which is underneath the large and dominant wording MT. RANIER.” Morinaga, 120
USPQ2d at 1748. The term SEATTLE was embedded within a larger phrase and less
prominent in size than the wording MT. RANIER and ESPRESSO & MILK or the
design. Thus, while the record reflected that SEATTLE identifies a known geographic
location, “as it is used in the context of Applicant’s mark,” Id. the Board found that
the relevant public would be unlikely to consider it to indicate the origin of the goods.
In the case before us, Applicant’s KOTA JAPAN mark consists of only two terms in
standard characters that may be displayed in any size relative to each other. Further,
the Board in Morinaga stated: “This is not to say that a geographic term in a
compound mark cannot dominate the commercial impression of the mark in a way
that renders the primary significance of the entire mark geographic.” Id.
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Applicant does not dispute that JAPAN is a generally well-known place. Further,
there is nothing in the record to suggest that KOTA detracts from its geographic
significance. See In re Consol. Specialty Rests., Inc., 71 USPQ2d 1921, 1927 (TTAB
2004) (“Neither the addition of the generic word ‘steakhouse’ nor the addition of the
design feature (including a mountain) detracts from the primary geographical
significance of the mark [including the word COLORADO].”). Nor does KOTA modify
JAPAN in such a manner that consumers will fail to recognize JAPAN as a
geographic location. We find, as a result, that the primary significance of KOTA
JAPAN is a generally known geographic place.
II. Is the consuming public likely to believe KOTA JAPAN indicates the
geographic origin of the goods, when in fact the goods do not come from
JAPAN?
“[T]he goods-place association often requires little more than a showing that the
consumer identifies the place as a known source of the product.” In re Les Halles De
Paris J.V., 334 F.3d 1371, 67 USPQ2d 1539, 1541 (Fed. Cir. 2003) (citing Loew’s
Theatres, 226 USPQ at 868 (“the PTO’s burden is simply to establish that there is a
reasonable predicate for its conclusion that the public would be likely to make the
particular goods/place association on which it relies.”) and California Innovations,
66 USPQ2d at 1855 (affirming the “reasonable predicate” standard)). To establish a
goods/place association, the Examining Attorney may provide excerpts from
telephone directories, gazetteers, encyclopedias, geographic dictionaries, the
LexisNexis® database, or the results of an Internet search. See Compania de Licores
Internacionales S.A., 102 USPQ2d at 1847. Thus, to make a goods-place association,
Serial No. 88003141
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the case law permits an inference that the consumer associates the product with the
geographic location in the mark because that place is known for producing the
product. Les Halles De Paris J.V., 67 USPQ2d at 1541.
Applicant acknowledges that its goods do not originate in JAPAN, that is, the
geographic place identified in its involved mark.8
The Examining Attorney submitted evidence, excerpted below, to show that
consumers identify Japan as a source of high quality knives and knife sharpening
stones:
• JW Web Magazine, (jw-webmagazine.com) in an article entitled The Guide
to Best Japanese Knives, states “If you are a chef or into cooking, you may
already know that Japanese knives have top-notch quality.”9 “No wonder
that the country of Samurai swords produces the best cooking knives in the
world.”10 “When you buy a fine Japanese knife, make sure to look after it
after use. Knives are very sensitive so maintenance is a key. … Purchasing
a whetstone with your knife is a must. Ask shops’ craftsmen for the best
whetstone [that] suits your knife!”11
• Chef’s Armoury (chefsarmoury.com) in an article entitled About Japanese
Knives, reports that “For centuries, Japanese craftsmen have been

8 Applicant’s April 5, 2019 response to the October 5, 2018 first Office Action at TSDR 16.
9 October 5, 2018 first Office action, TSDR 61-68.
10 Id. at TSDR 62.
11 Id. at TSDR 67.
Serial No. 88003141
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tinkering with steel. The Japanese are famous for making the very best
chisels, wood planes, saws, swords and knives throughout the ages.”12
• The Knives and Tools website (knivesandtools.com) in an article entitled
Japanese Whetstones: traditionally speaking the sharpest choice, states
“Sharpening knives has become a true art form in the Japanese culture. For
this reason they know exactly what type of tools you need to end up with
razor-sharp knives. It is therefore not surprising that the best sharpening
stones come from Japan.”13
• The MTC Kitchen website (mtckitchen.com) in an article entitled About
Japanese Knives, discusses the craftsmanship required to create very high
quality Japanese chef’s knives and sharpening stones therefor, many of
which are also made in Japan. “Tsukiji Masamoto is one of Japan’s premier
knife makers. … Also, Tsukiji Masamoto offers knife sharpening services
for professional cooks at their store in Tokyo’s famed Tsukiji Market so you
know you can trust the quality of their whetstones.”14
• The Town Cutler website (towncutler.com) offers Japanese natural
whetstones with the following description: “Japanese natural stones have
become rare and highly sought after. The stones we carry have been mined

12 Id. at TSDR 69-72.
13 April 26, 2019 final Office Action at TSDR 11-19. We note that the prices for products
offered for sale on this website are listed in Euros (€) and it is not clear from the record the
extent to which these goods are available in the United States. We note nonetheless, that the
article is written in English and the website appears to be accessible by any user.
14 Id. at 20-23, 42-44.
Serial No. 88003141
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in the area around Kyoto, Japan and have been sourced for us by
mastersmith Shosui Takeda.”15
• The Fendrihan website (fendrihan.com) offers Oozuku Japanese natural
whetstones with the following description: “Named for the site of its origin,
the Oozuku Japanese Natural Whetstone is a product of its homeland’s
finest honing practices. … Oozuku is one of the Higashi-mono, referring to
a collection of five quarries famous since ancient times for their sharpening
stones.”16
• The Amazon.com website (amazon.com) offers numerous Japanese
whetstones and sharpening stones that consistently receive high ratings
from purchasers.17
• The Chef Knives To Go website (chefknivestogo.com) primarily offers
Japanese sharpening stones: “Most of the stones you see here are Japanese
water stones, both synthetic and natural. … These stones are mined in the
Narutaki District near Kyoto and are well regarded by professionals.”18
• The sharpeningsupplies.com website states “Naniwa has been
manufacturing quality waterstones for over 60 years in Osaka, Japan.”19
and

15 Id. at 45-50.
16 Id. at 77-90.
17 Id. at 102-118.
18 Id. at 119-129.
19 Id. at 130-138.
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• The Knife Planet website (knifeplanet.net) in an article on the subject of
whetstones and sharpening stones, states “Japanese whetstones use water
for lubrication and thus, they are commonly known as Japanese Water
Stones because this type of stone is very porous. … I own a sharpening
business and I do all, very single knife, thousands a year by hand on
Japanese Water Stones so I need to have confidence in the stones I use.”20
We find the above-noted evidence sufficient to establish a goods/place association
(i.e., a reasonable predicate that the public will make the goods/place association). As
noted above, JAPAN is a widely known geographic location, famous for centuries of
producing, inter alia, high-quality, sought-after knives, knife sharpeners and
whetstones, particularly water stones.
Applicant submitted with its April 5, 2019 response to the Examining Attorney’s
first Office Action21 evidence that “Japan” also identifies a 2008 independent motion
picture produced in the United States, a 2002 Mexican motion picture, and a British
musical group active from 1974 to 1982. “The issue is not the fame or exclusivity of
the place name, but the likelihood that a particular place will be associated with
particular goods.” Loew’s Theatres, 226 USPQ at 868. Thus, the above-identified
evidence establishes the goods/place association.

20 Id. at 139-158.
21 At TSDR 91-106.
Serial No. 88003141
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III. Would a substantial portion of the relevant consumers likely be
deceived by KOTA JAPAN’s misrepresentation of the goods/place
association?
The materiality element reflects the deceptiveness requirement of section 2(e)(3).
California Innovations, 66 USPQ2d 1853. “[T]o establish a prima facie case of
materiality there must be some indication that a substantial portion of the relevant
consumers would be materially influenced in the decision to purchase the product or
services by the geographic meaning of the mark.” Miracle Tuesday, 104 USPQ2d at
1334 (quoting In re Spirits Int’l, N.V. 563 1347, 90 USPQ2d 1489, 1495 (Fed. Cir.
2009)). In determining “materiality,” the Board looks to evidence regarding the
probable reaction of purchasers to a particular geographic term when it is used in
connection with the goods. Compania de Licores Internacionales S.A., 102 USPQ2d
at 1850. Thus, the materiality element in cases involving goods may be satisfied
under the following conditions:
• there is evidence showing that the place named in the mark is well known
for the goods;
• the goods are a principal product of the place named in the mark;
• the goods are, or are related to, the traditional products of the place named
in the mark; or
• the goods are an expansion of the traditional products of the place named
in the mark.
Id. (citing California Innovations, 66 USPQ2d at 1857).
In support of the refusal, the Office should submit evidence
showing that the association between the goods and the
Serial No. 88003141
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geographic place would be a material consideration in a
consumer’s decision to purchase the goods. Searches that
combine the place name with the name of the goods and
terms such as “famous,” “renowned,” “well known,” “noted
for,” “principal or traditional” may be useful to establish
materiality. The stronger the connection between the
geographic place and the goods, the more likely the
misrepresentation will be a material one. In re California
Innovations, Inc., 66 USPQ2d at 1857 (“[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.”
(quoting In re House of Windsor, 221 USPQ 53, 57 (TTAB
1983, recon. denied, 223 USPQ 191 (TTAB 1984)).
Id.
The evidence excerpted above demonstrates that knives and sharpening stones,
particularly water stones, have for centuries been perceived by United States
consumers as a traditional product of JAPAN and are considered to be among the
best products of their kind by professionals, collectors and dedicated amateurs. The
evidence demonstrates the consumers are interested in purchasing sharpening stones
from JAPAN based upon their quality and that the geographic origin of these goods
plays a role in their purchasing decision. Indeed, from the record on appeal we draw
an inference that the geographic misrepresentation is a material factor in the
purchasing decision, based upon a “heightened” association between the goods and
the location. In re Les Halles De Paris J.V., 67 USPQ2d at 1542 (the Patent and
Trademark Office may raise an inference of materiality with evidence that the place
is famous as a source of the goods at issue). The evidence shows that sharpening
stones are considered by United States consumers to be a traditional product of
JAPAN, and that JAPAN is famous for producing the highest quality water stones.
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Further, the record shows the factors consumers consider when they purchase
sharpening stones and that the origin of the sharpening stones plays a role in that
decision. Cf. U.S. Playing Card Co. v. Harbro LLC, 81 USPQ2d 1537, 1542 (TTAB
2006) (“The record does not show that a material reason for a tourist’s choice of
playing cards is that the cards were made or used in Las Vegas.”). Finally, we note
Applicant’s concession that:
The Examining Attorney has presented a great deal of evidence to show
that knives are a principal and famous product of Japan, and Applicant
does not contest such. Applicant thus presents no argument that, if a
goods-place association could be made, then sharpening tools are related
to Japanese knives. See California Innovations, 329 F.3d at 1341, 66
USPQ2d at 1857 (Materiality may be found where goods are related to
traditional products of the location).22

We find the evidence of record demonstrates that a significant portion of the
relevant consumers would be materially influenced in the decision to purchase
sharpening stones by the geographic meaning of KOTA JAPAN.
Decision: The refusal to register Applicant’s mark KOTA JAPAN under
Trademark Act Section 2(e)(3), is affirmed.

22 4 TTABVUE 11.