Hiromichi Wada

Trademark Trial and Appeal Board

Oct 6, 1998

No. 74657464 (T.T.A.B. Oct. 6, 1998)

Paper No. 14
JQ
THIS DISPOSITION IS CITABLE
AS PRECEDENT OF THE TTAB 10/6/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Hiromichi Wada
________
Serial No. 74/657,464
_______
Bruce A. Tassan of Jackson & Kelly for applicant.
Kim Saito, Trademark Examining Attorney, Law Office 109
(Deborah S. Cohn, Managing Attorney).
_______
Before Quinn, Hohein and Hairston, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Hiromichi Wada (doing
business as AJW TransTech), a Japanese citizen with an
address in Michigan, to register the mark NEW YORK WAYS
GALLERY (“NEW YORK” disclaimed) for “backpacks, duffel bags,
carry-on bags, change purses, document cases, garment bags
for travel, hand bags, luggage, pouches (drawstring and
felt), purses, tote bags, traveling bags, waist pouches,
wallets, and toiletry cases sold empty.”1

Ser No. 74/657,464
2
The Trademark Examining Attorney has refused
registration under Section 2(e)(3) of the Trademark Act on
the ground that the mark as a whole, if applied to the
goods, would be primarily geographically deceptively
misdescriptive of them.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney filed briefs.2 An oral
hearing was not requested.
In order to establish a prima facie case for refusal of
registration under Section 2(e)(3), the Examining Attorney
must show that the public would believe that the goods for
which the mark is sought to be registered originate in the
geographic place named in the mark when, in fact, the goods
do not originate in that geographic place. In re Societe
Generale des Eaux Minerals de Vittel S.A., 824 F.2d 957, 3
USPQ2d 1450 (Fed. Cir. 1987); In re Loew’s Theaters, Inc.,

1 Application Serial No. 74/657,464, filed April 7, 1995,
alleging a bona fide intention to use the mark in commerce.
2 Applicant’s reply brief is accompanied by evidence. So as to
be clear on this point, we reiterate the Board’s remarks in its
order dated September 8, 1997. The submission is untimely and,
thus, has not been considered in making our decision. Trademark
Rule 2.142(d). Applicant’s request in its reply brief that the
Board take judicial notice of the “thousands of registered marks
incorporating the term NEW YORK for products and services that do
not originate in New York state or city” is denied. Beech
Aircraft Corp. v. Lightning Aircraft Co., 1 USPQ2d 1290 (TTAB
1986). Further, as indicated in the Board’s order dated
September 8, 1997, the evidence submitted on August 6, 1997 is
not properly of record. We hasten to add that, in any event,
even if any or all of this evidence were considered, it would not
be persuasive of a different result in this case.
Ser No. 74/657,464
3
769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985); and In re
Nantucket, Inc., 677 F.2d 95, 213 USPQ 889 (CCPA 1982).
In support of her prima facie case, the Examining
Attorney offered evidence to show (1) New York is a place
that is neither obscure nor remote, and (2) New York is
known for the design, manufacture and sale of leather goods
and handbags. In particular, the Examining Attorney
introduced listings for “New York” in Webster’s New
Geographical Dictionary (1984) and The Oxford English
Dictionary (2d ed. 1989), as well as the following
materials: excerpts from Thomas Register of American
Manufacturers (1995) listing manufacturers, which are
located in New York, of luggage items, pocketbooks and
leather goods; excerpts from WWD Buyer’s Guide—-Women’s
Apparel & Accessories Manufacturers (1993) showing listings
for manufacturers located in New York with product lines for
leather goods and handbags; and excerpts retrieved from the
NEXIS database wherein statements appear to the effect that
handbags are designed in New York and that certain handbag
manufacturers’ headquarters are located in New York.
We find that this evidence establishes a prima facie
case for refusal of registration under Section 2(e)(3).
To rebut the Examining Attorney’s prima facie case,
applicant contends that its mark NEW YORK WAYS GALLERY is
not, when viewed as a whole, the name of a geographic place.
Ser No. 74/657,464
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Applicant argues, moreover, that when the words “WAYS
GALLERY” are added to the words “NEW YORK,” the mark as a
whole, NEW YORK WAYS GALLERY, merely suggests that
applicant’s goods are stylish or aimed at sophisticated
consumers. Applicant also contends that it would not be
clear to those encountering the mark whether the term “New
York” identifies the state or the city. In response to the
Examining Attorney’s specific inquiry, applicant indicated
that “applicant’s products will be manufactured in a variety
of locations and it is expected that sometime in the future
applicant may manufacture products in New York.” (response,
July 23, 1996)3 Applicant asserts that “everything in the
world is made or sold in New York” and that “[a]s a result
of the common usage of the term New York, purchasers would
not be so naïve as to believe that any mark which includes
the term New York identifies products that originate from
this state or city.” (reply brief, p. 1)
We agree with the Examining Attorney’s assessment of
this case. Here, applicant’s mark includes the term “New
York.” There is no genuine issue that “New York” is the

3 Later, in his reply brief, applicant states, in making one of
his arguments, that “some of applicant’s products are made in New
York....” Notwithstanding this latest statement, there is no
documentary evidence to support the location of manufacture of
the goods or otherwise to indicate that the goods have any
connection with New York.
Ser No. 74/657,464
5
name of a geographic place which is not obscure, but rather
is generally known to the public.
Further, as shown by the Examining Attorney’s evidence
bearing on a goods/place association, New York is well known
as a place for the design, manufacture and sale of goods of
the type listed in the application. However, applicant is
located in Michigan, and, as noted above, there is nothing
in the record to indicate that applicant’s goods have their
origin in, or any connection with, New York (either the city
or the state).4
Our view is that the mark, when viewed in its entirety,
projects a primarily geographic significance, with the
addition of the words “WAYS GALLERY” (even if arbitrary) to
“NEW YORK” not detracting from this primary geographic
significance of the mark. Applicant simply has not provided
any facts as to why, in its view, the primary geographic
significance of the mark is lost by the addition of these
words. The determination of registrability under Section
2(e)(3) should not depend on whether the mark is unitary or
composite. In re Cambridge Digital Systems, 1 USPQ2d 1659,
1662 (TTAB 1986). See also: In re Nantucket Inc., supra,
at 893, n. 7; and In re Handler Fenton Westerns, Inc., 214
USPQ 448 (TTAB 1982).

Ser No. 74/657,464
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Applicant further asserts that the mark as a whole
conveys the idea of stylish products, not a geographic
place. In this connection, it is noteworthy that applicant
has not submitted any evidence that there is a particular
New York style of products of the type listed in the
application, and that purchasers would make such an
association upon encountering the mark.5 Rather, although
the words “WAYS GALLERY” arguably may suggest a gallery or
collection of products having a New York “way” about them,6
the primary significance of the mark as a whole remains
geographic.
Applicant also argues that the goods might eventually
originate in New York. As noted above, however, this
statement is entirely unsupported by any evidence of record.
In sum, based on the record before us in this appeal,
we find that it is reasonable to assume that consumers
encountering the mark NEW YORK WAYS GALLERY will mistakenly
believe that the goods have their origin in New York City or

4 Applicant’s unsupported statements, regarding New York as the
site of manufacture, either currently or sometime in the future,
simply are too speculative and ambiguous.
5 Even if applicant had established an association between New
York and a particular style, such association would not be
inconsistent with the primary geographic significance of the
mark, as the association may be made precisely because of the
primary significance of New York as a city in the United States.
6 While we have offered this meaning for the mark, we are, quite
frankly, unsure of what connotation the two words are meant to
convey. Applicant has offered no guidance other than to state,
as indicated above, that the words are arbitrary.
Ser No. 74/657,464
7
are otherwise connected with New York. In considering this
issue, we take note of the Board’s language in a prior case
wherein it was found that PERRY NEW YORK and design (a
silhouette of the New York City skyline) for women’s
clothing is deceptive because it deceives purchasers into
believing that the goods bearing the mark have their
geographic origin in New York, when the goods have no
connection with New York and, in fact, originate in North
Carolina. In re Perry Manufacturing Co., 12 USPQ2d 1751
(TTAB 1989). In this connection, the Board stated:
Only studied ignorance would prevent us
from finding as fact that New York is a
world renowned center of culture and
high fashion and that people from
throughout the world go to New York to
purchase the latest styles in clothing,
from haute couture to off-the-rack
garments. Such fact is the appropriate
matter for judicial notice. See B.V.D.
Licensing v. Body Action Design, 846
F.2d 727, 6 USPQ2d 1719, 1721 (Fed. Cir.
1988). That being the case, we have no
doubt that purchasers seeing clothing
bearing applicant’s mark, which
incorporates the words “New York” and
the New York skyline, would immediately
assume that such clothing has a
connection with New York, either in its
manufacture or its design.
Id. at 1752. See also: In re The Cookie Kitchen, Inc., 228
USPQ 873 (TTAB 1986)[MANHATTAN is primarily geographically
deceptively misdescriptive for cookies having no association
with that borough of New York].
Ser No. 74/657,464
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The present case is to be distinguished from the case
relied upon by applicant, namely, Hyde Park Clothes, Inc. v.
Hyde Park Fashions, Inc., 93 USPQ 250 (S.D.N.Y. 1951),
aff’d, 204 F.2d 223, 97 USPQ 246 (2d Cir. 1953), cert.
denied, 346 U.S. 827, 99 USPQ 491 (1953)[“Hyde Park,” being
a geographic location not known as a garment manufacturing
or clothing design center, conveys a wholly different
commercial impression, when applied to garments, than does
“New York.”]. Here, given the renown of New York City as a
fashion center, we can only conclude that consumers would
assume a connection with New York when encountering the mark
NEW YORK WAYS GALLERY on applicant’s hand bags, luggage and
related goods. As Professor McCarthy has observed, “[i]f
the composite mark contains the name of the geographic
location from which the goods do not come, a court may be
more strict in its scrutiny....” 2 J. T. McCarthy, McCarthy
on Trademarks and Unfair Competition, §14:11 (4th ed. 1998).
The amendments to Section 2 of the Trademark Act of
1946 made by Public Law 103-183, 107 Stat. 2057, The North
American Free Trade Enactment Act (“NAFTA”), apply to
applications filed on or after December 8, 1993, which
includes the one involved in this appeal. Prior to these
amendments, the prohibitions against registration on the
ground that a mark is primarily geographically descriptive
or that a mark is primarily geographically deceptively
Ser No. 74/657,464
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misdescriptive were contained in Section 2(e)(2) of the
Trademark Act. Under the law as amended, the prohibition
against registration on the ground that a mark is primarily
geographically deceptively misdescriptive is contained in
Section 2(e)(3) of the Trademark Act, which is applicable to
the case involved herein. The legal standard of determining
the issue has not changed, although marks found to be
primarily geographically deceptively misdescriptive are no
longer eligible for registration under the provisions of
Section 2(f) of the Trademark Act, subject to certain
grandfather provisions. Fred Hayman Beverly Hills Inc. v.
Jacques Bernier Inc., 38 USPQ2d 1691, 1692 (TTAB 1996). See
generally: 2 J. T. McCarthy, McCarthy on Trademarks and
Unfair Competition, supra, at §14:31.
Inasmuch as we have found applicant’s applied-for mark
to be primarily geographically deceptively misdescriptive
under Section 2(e)(3), the mark is unregistrable. However,
an additional comment is in order. We note that applicant
has disclaimed the term “New York,” apparently in an attempt
to salvage the registrability of the mark as a whole. It is
our view that a disclaimer of a primarily geographically
deceptively misdescriptive term apart from a mark as a whole
is not permissible.
NAFTA and the Trademark Act, as accordingly amended,
are silent on the propriety of disclaimers of primarily
Ser No. 74/657,464
10
geographically deceptively misdescriptive terms in composite
marks. Further, we could find nothing in the legislative
history of NAFTA addressing this point, and our research
failed to turn up any case law on point. What we did find
is that the United States Patent and Trademark Office, in an
Official Gazette notice (dated April 1, 1994), addressed the
amendments to Section 2(e) of the Trademark Act as a result
of NAFTA, stating that
[a] mark that is unregistrable under
§2(e)(3) because it contains matter
which is primarily geographically
deceptively misdescriptive of the goods
or services will not be rendered
registrable by a disclaimer of the
geographically deceptively
misdescriptive component. Matter that
is primarily geographically deceptively
misdescriptive may be omitted or deleted
from the drawing of a mark in
appropriate cases.
1170 TMOG 266 (January 3, 1995). Section 1210.06 of the
Trademark Manual of Examining Procedure (1997) contains the
identical language.7

7 Reference to another section provides an analogous situation.
Section 1203.04 of the Trademark Manual of Examining Procedure
(1997) addresses the change to Section 2(a) of the Trademark Act
regarding geographical indications for wines and spirits.
Section 2(a) now prohibits the registration of a designation
which consists of or comprises “a geographical indication which,
when used on or in connection with wines or spirits, identifies a
place other than the origin of the goods and is first used on or
in connection with wines or spirits by the applicant on or after
[January 1, 1996].” This provision was added by the Uruguay
Round Agreements Act, implementing the Trade Related Intellectual
Property (TRIPs) portions of the General Agreement on Tariffs and
Trade (GATT). The TMEP section goes on to state that “[n]either
Ser No. 74/657,464
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The only way to give effect to the statutory amendments
to the Trademark Act as a result of NAFTA’s prohibition
against registration of geographically misdescriptive
designations is to prohibit disclaimers of such designations
when they appear in composite marks. To do otherwise would
eviscerate the intent of Section 2(e)(3), as amended. That
is to say, it would be anomalous to prohibit registration of
the mark NEW YORK WAYS GALLERY because it is primarily
geographically deceptively misdescriptive, but allow
registration of the same geographically deceptively
misdescriptive mark with a mere disclaimer of the geographic
element which renders the mark primarily geographically
deceptively misdescriptive. As stated in the past, the
public is unaware of disclaimers that quietly reside in the
records of the Office. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). The mark NEW YORK
WAYS GALLERY has the same connotation to the public
regardless of the disclaimer.
The rationale underlying this disclaimer prohibition is
the absolute bar to registration under Section 2(f) of such
primarily geographically deceptively misdescriptive terms.
An analogous situation involves disclaimers of deceptive

a disclaimer of the geographical designation nor a claim that it
has acquired distinctiveness under §2(f) can obviate a §2(a)
refusal if the mark consists of or comprises a geographical
indication which identifies a place other than the origin of
wines or spirits.”
Ser No. 74/657,464
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terms under Section 2(a). Such disclaimers do not permit
registrability.8 See: In re Perry Manufacturing Co., supra
[PERRY NEW YORK and design (NEW YORK disclaimed) for
clothing not originating in New York is deceptive]; and
Evans Products Company v. Boise Cascade Corporation, 218
USPQ 160 (TTAB 1983) [CEDAR RIDGE (CEDAR disclaimed) for
hardboard siding not made of cedar is deceptive]. See also:
In re Budge Manufacturing Co. Inc., 857 F.2d 773, 8 USPQ2d
1259 (Fed. Cir. 1988) [LOVEE LAMB for automobile seat covers
is deceptive: “a mark which includes deceptive matter is
barred from registration....”]. Deceptive terms are barred
on the Supplemental Register as well as on the Principal
Register. A mark which runs afoul of Section 2(e)(3) should
not be treated any differently when it comes to
disclaimers.9

8 In this regard, deception has been found where the offending
word has been combined with a suggestive term and even where the
significance of the mark as a whole was not entirely clear. See,
e.g., R. Neumann & Co. v. Overseas Shipments, Inc., 326 F.2d 786,
140 USPQ 276 (CCPA 1964) [DURA-HYDE held deceptive and
deceptively misdescriptive of plastics material of leatherlike
appearance made into shoes]; and E. Hubschman & Sons Inc. v.
Sommers Plastic Products Co., Inc., 148 USPQ 165 (TTAB 1965)
[CAFFETTA held deceptive and deceptively misdescriptive of vinyl
plastic piece goods sold in rolls and used in making handbags,
wallets, portfolios, belts, and the like].
9 Section 23 prohibits registration of marks “declared to be
unregistrable under subsections (a), (b), (c), (d), and (e)(3) of
§2 of this Act....”
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Decision: The refusal to register is affirmed.
T. J. Quinn
G. D. Hohein
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
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