Holophane Corp.

Trademark Trial and Appeal Board

Aug 24, 2000

No. 75298577 (T.T.A.B. Aug. 24, 2000)

GDH/gdh
Paper No.
14
8/24/00
UNITED STATES PATENT AND TRADEMARK OFFICE
______
Trademark Trial and Appeal Board
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In re Holophane Corporation
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Serial No. 75/298,577
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Paul M. Schwartz and Maria Franek Angileri for Holophane
Corporation.
Vivian M. First, Trademark Examining Attorney, Law Office 104
(Sidney I. Moskowitz, Managing Attorney).
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Before Hohein, Hairston and McLeod, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judges:
Holophane Corporation, a Delaware corporation with a
location in Newark, Ohio, has filed an application to register
the term "MILAN" as a trademark for goods identified as "heavy-
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/298,577
2
duty electric lighting fixtures for outdoor architectural
lighting".1
Registration has been finally refused 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 of applicant's goods.
Applicant has appealed. Briefs have been filed but an
oral hearing was not requested. We reverse the refusal to
register.
In order to establish a prima facie case for refusal
on the ground that a mark is primarily geographically
deceptively misdescriptive of an applicant's goods within the
meaning of Section 2(e)(3) of the statute, the Examining
Attorney must show that the primary significance of the mark is
a generally known geographic place; that purchasers would be
likely to think that the goods originate in the geographic place
identified by the mark, that is, purchasers would make a
goods/place association; and that the goods do not in fact
originate in the place identified by the mark. See, e.g., In re
Wada, 194 F.3d 1297, 52 USPQ 1539, 1540 (Fed. Cir. 1999); In re
Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d
957, 3 USPQ2d 1450, 1452 (Fed. Cir. 1987); In re Loew's

1 Ser. No. 75/298,577, filed on May 27, 1997, which alleges a bona fide
intention to use such term in commerce.
Ser. No. 75/298,577
3
Theatres, Inc., 769 F.2d 764, 226 USPQ 865, 867 (Fed. Cir.
1985); and In re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889,
892-93 (CCPA 1982). However, "[a] mark is not primarily
geographic where the geographic meaning is obscure, minor,
remote, or not likely to be connected with the goods." In re
Wada, supra, citing In re Nantucket, Inc., supra at 892.
Applicant argues that its "use of 'MILAN' is purely
arbitrary and fanciful" and that its use thereof "is not
[primarily] geographically deceptively misdescriptive because
there is no proof that the purchasers would associate heavy-duty
lighting fixtures with fashionable lighting from Milan, Italy."
In particular, applicant insists that:
As the evidence of record demonstrates,
the applicant manufactures and distributes
heavy-duty electric lighting fixtures for
outdoor architectural lighting. These
fixtures are neither promoted nor sold to
retail customers nor are they part of the
fashion world for which Milan, Italy, is
famous. The applicant provides lighting
fixtures and systems specifically for
outdoor architectural projects such as
highways, roadways, parking lots, and the
like. .... The applicant's fixtures are
purchased by knowledgeable, technically
astute engineers, architects, and city
planners who are more interested in
function, including weather resistance and
photometric performance, than artful design.
The applicant has been in the business
of manufacturing and distributing heavy-duty
lighting fixtures for commercial and

Ser. No. 75/298,577
4
industrial applications since 1896. Based
in Columbus Ohio, the applicant has
maintained a national and international
reputation for highly engineered, premium
quality heavy-duty lighting fixtures for
over 100 years. As indicated above, buyers
of the applicant's heavy-duty lighting
fixtures ... are intimately familiar with
the applicant, its location and reputation.
Notwithstanding the fact that the
applicant's use of the mark "MILAN" is
arbitrary, it is not likely--indeed it is
highly unlikely--that such buyers will in
any way believe that the ... lighting
fixtures originated in Milan. To the
contrary, such buyers are well aware that
the applicant's products originate from the
same place they have come from for the last
century--Columbus, Ohio.
In addition, while stating that it "does not disagree
with the examiner's argument that Milan is frequently referred
to [as] a 'fashion capital' of the world," applicant contends
that the mere fact that its product specification literature
"refers to its fixtures as 'Euro styled luminaries'" does not
"imply that the applicant's fixtures originated in Milan" as
asserted by the Examining Attorney. According to applicant, "it
is highly unlikely that sophisticated engineers, architects, and
city planners will in any way believe that the ... light
fixtures originated in Europe, much less Milan, a fashion
capital of the world, [just] because the applicant's goods are
referred to as 'Euro styled luminaires' in the ... product
specifications."
Ser. No. 75/298,577
5
Lastly, although applicant makes no mention of the
fact that the excerpts furnished by the Examining Attorney from
her searches of the "NEXIS" database show that Milan, Italy is
home to luminaire factories and to "Euroluce," a bi-annual trade
show for electric lighting products, applicant urges, in light
of the "NEXIS" excerpts of record demonstrating that such city
is known as one of the fashion capitals of the world with
respect to clothing, that it would be "beyond belief" for
purchasers "to associate the applicant's heavy-duty lighting
fixtures with the fashion industry in Milan, Italy." Applicant
therefore concludes that "[b]ecause there is no connection of
geographical meaning of the mark with the goods in the public
mind," the term "MILAN" is not primarily geographically
deceptively misdescriptive.
The Examining Attorney, on the other hand, insists
that such term is primarily geographically deceptively
misdescriptive "because the public will believe that the goods
for which the mark is sought to be registered originate in
Milan, Italy, the place named in the mark." Noting that
applicant admits, as stated in its July 20, 1998 response, that
its "lighting fixtures are manufactured in Newark, Ohio, not
Milan, Italy," and that the definition of record, from Webster's
II New Riverside University Dictionary (1994) at 1486, lists
"Milan" under the category of "Geographic Entries" as a city in
Ser. No. 75/298,577
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Northern Italy with a population of 1,634,638, the Examining
Attorney asserts that "the evidence of record demonstrates that
Milan, Italy is a location that is known for the manufacture and
sale of lighting products."
In support of her position, the Examining Attorney
contends that the following representative examples of "NEXIS"
excerpts are sufficient to show that Milan, Italy "is associated
with lighting products" to such an extent that purchasers would
make "the necessary goods/place association" (emphasis added):2

2 While we also note the following excerpt, it nevertheless is of
limited probative value inasmuch as it is from a foreign publication
which has not been shown to have a significant circulation in the
United States (emphasis added):
"But the heart and soul of contemporary industrial
design remains firmly rooted in Milan and in Northern
Italy. There are numerous companies that produce and
export all over the world - from office furniture to
lighting and kitchenware, traditional fruits of this
uniquely Italian combination of industry and aesthetics." -
- The Times, June 3, 1998.
As stated by the Board in In re Men's International Professional
Tennis Council, 1 USPQ2d 1917, 1919-20 (TTAB 1986), "we cannot--absent
other evidence--, infer that these foreign uses have had any material
impact on the perceptions of the relevant public in this country." In
the same vein, the Board indicated in In re Bel Paese Sales Co., 1
USPQ2d 1233, 1235 (TTAB 1986), that articles in foreign publications "
are of no probative value as to public perception in the United States
since ... there is no evidence as to the extent of circulation of
those publications in the United States, if any." In view thereof,
the following excerpt, mentioned by the Examining Attorney in her
brief, is likewise without probative value in this case (emphasis
added):
"But then, they take lighting more seriously in Italy
especially during Euroluce, the lighting fair currently
being held in Milan, the launchpad staged every other year
for top names in lighting." -- The Independent (London),
April 16, 1998.
Ser. No. 75/298,577
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"The big news here last spring was not
furniture. It was lighting. ....
But it was a different story at
Euroluce, the lighting show that pops up
within the umbrella of the Salone every
other year." -- Chicago Tribune, August 30,
1998 (article datelined "Milan" and
headlined, in part, "LIGHTING PRODUCTS OF
ALL KINDS TURN MILAN ON");
"Finally, 450 exhibitors attended
Euroluce (an exhibition of lighting
equipment, alternating with the Salone della
Cucina) ....
....
The strength of the Milan event appears
to consolidate each year ...." -- Cabinet
Maker, May 22, 1998; and
"We've produced annual issues on
resort, exterior, museum, and office
lighting assignments; covered the trade show
waterfront from Hanover, Germany, to Hong
Kong; reported from sites such as the
Atlanta Olympics and luminaire factories in
Milan ...." -- Lighting Dimensions, October
1997;
In addition, while not specifically mentioned by the Examining
Attorney, the following "NEXIS" excerpt would appear to have
some relevance:
"MILAN, Italy--Italian lighting runs
the gamut from period and modern designs to
the famed blown glass Murano and Tuscany,
but Euroluce '98 -- the first exhibition to
use the new pavilions of the Milan
fairground -- looked more like a science
fair or an art gallery than a trade show." -
- HFW The Weekly Newspaper for the Home
Furnishing Network, April 27, 1998.

Ser. No. 75/298,577
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Coupling the above evidence with other "NEXIS"
excerpts showing that, with respect to the clothing design
field, Milan, Italy is internationally recognized, like London,
Paris and New York, as a fashion capital for such industry, the
Examining Attorney asserts that Milan has been demonstrated to
be "the European city that is a leader in lighting design
fashion." In view thereof, and because "applicant's product
literature highlights and emphasizes the geographic significance
of the word 'MILAN' by describing the goods at issue as 'the
Euro style luminaire,'" the Examining Attorney concludes that
the requisite goods/place association would be made by
applicant's customers because the product description in its
literature "connects the goods of the applicant to Milan,
Italy." As to applicant's contention that customers for its
products would not believe that the goods originate in or are
otherwise connected with Milan, Italy because they know that
applicant has been in business in its Ohio location for over a
century, the Examining Attorney argues that:
[I]t is common for a product to have its
origin in several locations. For example, a
lighting fixture could have components from
Japan, a housing manufactured in the United
States, and be designed by a famous European
designer. Therefore, consumer familiarity
with the location of applicant's business
does not negate the geographic
misdescriptiveness of the mark.
Ser. No. 75/298,577
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The record in this case plainly establishes that the
first and third prongs of the test for whether a term is
primarily geographically deceptively misdescriptive of the goods
with which it is associated are satisfied in that the term
"MILAN" has been shown to be the name of a generally known
geographic place and applicant's lighting fixtures do not come
from such place. We are constrained to agree with applicant,
however, that the record does not support a conclusion that the
second prong of the test, namely, that the purchasing public for
applicant's goods would make a goods/place association such that
they would believe that applicant's heavy-duty electric lighting
fixtures for outdoor architectural lighting do in fact
originate, in the sense that they are produced and/or designed,
in Milan, Italy. Stated otherwise, the record simply does not
show that engineers, architects and city planners, who
constitute the bulk of the purchasers for applicant's goods,
have reason to believe that such goods, when bearing or
otherwise sold under the term "MILAN," come from the Italian
city of Milan.
In this regard, we have not overlooked the fact that
applicant's product specification literature, in addition to
providing a "GENERAL DESCRIPTION" of its "OUTDOOR ARCHITECTURAL
LIGHTING" as "The Euro styled luminaire," lists various models
of its lighting fixtures under the names of the European cities
Ser. No. 75/298,577
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of "Vienna," "Milan," "Lyon" and "Prague," on one page thereof,
and sets forth the name of the Swiss city of "Bern" on another
page. Rather than being likely to cause applicant's customers
to make a goods/place association with such geographical names,
including the term "MILAN," we think that in context the use of
those names would be merely evocative of a style of, or the
ambiance created by, the architectural lighting fixtures found
in those cities. Prospective purchasers and buyers of
applicant's goods would not be likely to believe that, for
example, the "MILAN" lighting fixture depicted is either made or
has been especially designed in Milan, Italy any more than they
would be by the reference in applicant's literature to its
product as a "Euro styled luminaire."
Moreover, while the record shows that there are at
least some luminaire factories in Milan and that such city hosts
a major bi-annual electrical lighting trade show known as
"Euroluce," such evidence is insufficient in our view to support
a conclusion that customers for applicant's lighting fixtures
would make a goods/place association of any kind, much less that
they would regard Milan as "the European city that is a leader
in lighting design fashion" as urged by the Examining Attorney.
The fact, furthermore, that the city of Milan, Italy is
undeniable a fashion capital with respect to clothing and the
design thereof does not mean that the term "MILAN" signifies
Ser. No. 75/298,577
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fashionable or stylish goods of all types including, arguably,
heavy-duty electric lighting fixtures for outdoor architectural
lighting. Absent evidence, for instance, that Milan, Italy is
prominently associated with the design of commercial and
industrial products in general or lighting fixtures in
particular, we must find on this record that actual and
prospective customers for applicant's goods would not expect
heavy-duty electric lighting fixtures for outdoor architectural
lighting to originate in Milan, Italy when marketed under the
term "MILAN". Accordingly, without adequate proof of a
goods/place association between applicant's lighting fixtures
and the term "MILAN," the refusal on the ground that such term
is primarily geographically deceptively misdescriptive of
applicant's goods cannot be upheld. See, e.g., In re Nantucket,
Inc., supra at 894; and Philip Morris Inc. v. Reemtsma
Cigarettenfabriken GmbH, 14 USPQ2d 1487, 1490 (TTAB 1990).
Decision: The refusal under Section 2(e)(3) is
reversed.
G. D. Hohein
P. T. Hairston
Ser. No. 75/298,577
12
L. K. McLeod
Administrative Trademark
Judges,
Trademark Trial and Appeal
Board