International Business Machines Corp.

Trademark Trial and Appeal Board

Jan 11, 2001

No. 75251068 (T.T.A.B. Jan. 11, 2001)

1/11/01
Paper No. 16
JQ
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re International Business Machines Corporation
________
Serial No. 75/251,068
_______
Alexander Tognino for applicant.
Mary E. Crawford, Trademark Examining Attorney, Law Office
102 (Thomas V. Shaw, Managing Attorney).
_______
Before Quinn, Wendel and Bottorff, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by International
Business Machines Corporation to register the mark
SANFRANCISCO for “computer software for use in the creation
of other software using object oriented frameworks.”1
The Trademark Examining Attorney has refused
registration under Section 2(e)(3) of the Trademark Act on
the ground that the mark, if used on the goods, would be
1 Application Serial No. 75/251,068, filed March 4, 1997,
alleging a bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75251068
2
primarily geographically deceptively misdescriptive of
them.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney filed briefs. 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 Wada, 194 F.3d 1297, 52 USPQ2d 1539 (Fed.
Cir. 1999), aff’g, 48 USPQ2d 1689 (TTAB 1998); 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 Theatres,
Inc., 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 listings for “San Francisco” from a
general dictionary (The American Heritage Dictionary of the
English Language (3rd ed. 1992)) as well as from a
geographical dictionary (Webster’s New Geographical
Dictionary (1988)). The Examining Attorney also relied
upon excerpts retrieved from the NEXIS database which,
Ser No. 75251068
3
according to the Examining Attorney, show that the San
Francisco Bay Area is known for computer software
development, and that an area of the city (“south of
Market” also called “SOMA”) is known as “Multimedia Gulch.”
Also of record are web pages pulled off the Internet,
including one of the San Francisco Chamber of Commerce
stating that “San Francisco’s Multimedia Gulch has
continued to grow as a center of Internet-content and
software firms.” The Examining Attorney maintains that the
primary significance of the term “San Francisco” is
geographic and that purchasers are likely to believe that
applicant’s computer software originates in San Francisco
when, in fact, it does not.
Applicant contends that the mark sought to be
registered is not primarily a geographic term, pointing out
that “San Francisco” is the Spanish name for Saint Francis
who founded the Franciscan order of monks, the second
largest order in the Roman Catholic church. Applicant
asserts that “[t]he city in California is named for Saint
Francis and developed around the site of a Franciscan
mission, originally known as San Francisco de
Asis....[t]hus, the primary significance of San Francisco
is to identify San Francisco and not the city.” (brief, p.
4) Applicant goes on to cite other geographical dictionary
Ser No. 75251068
4
listings of geographic locations which it alleges are named
after the saint. Applicant concludes that “the primary
significance of San Francisco is not the city in
California, but the Saint after whom the city and a variety
of geographical places were named.” (brief, p. 5) With
respect to a goods/place association, applicant relies upon
more recent editions of geographical dictionaries,
gazetteers and on-line resources which do not list
“computers” as one of the industries in the city of San
Francisco. Applicant also critiques the NEXIS articles
introduced by the Examining Attorney. Applicant contends
that “it is not San Francisco that is associated with
computer software but only the small portions of it
designated as Multimedia Gulch and/or South of Market.”
(brief, p. 8) Applicant also asserts that the city of San
Francisco and the area known as “Silicon Valley” are two
distinct geographic locations. Applicant further argues
that the nature of the software business, that is, the fact
that people can access the Internet and download software
with the push of a button, eliminates the association of a
geographic location with the origin of the software.
Applicant also introduced the declarations of five
individuals who are acquainted with the computer industry,
all opining that the city of San Francisco is not
Ser No. 75251068
5
associated with the production of software. In relying on
these declarations, applicant points out that purchasers of
its goods are software programmers and others involved in
software development who are sophisticated and would
readily discern that the mark sought to be registered
indicated origin in applicant rather than conveying a
primary geographic significance. Lastly, applicant has
stated that its goods do not come from San Francisco.
Contrary to applicant’s argument, it hardly need be
stated that “San Francisco” is the name of a major city in
California. San Francisco is not an obscure geographic
place, but rather is generally known to the public. This
fact is clearly established by the evidence of record. In
the face of such evidence, applicant’s contention that the
primary significance of the term is the name of Saint
Francis is disingenuous and, quite simply, ignores reality.
We thus focus our attention on the central issue in
this case: whether the public would believe that the
software for which the mark SANFRANCISCO is sought to be
registered originates in the geographic place named in the
mark when, in fact, the goods do not originate in that
geographic place.
Based on the record before us in this appeal, we find
that it is reasonable to assume that consumers encountering
Ser No. 75251068
6
applicant’s SANFRANCISCO mark will mistakenly believe that
the software sold thereunder has its origin in the city of
San Francisco or is otherwise connected with San Francisco.
As shown by the NEXIS articles, and the web page of the
city’s Chamber of Commerce, computer software and related
goods and services emanate from San Francisco and the
larger metropolitan area known as the San Francisco Bay
Area. Examples include the following:
Key industries include multimedia,
computers and electronics. Also high
in terms of job growth will be the
computer-services and commercial–art
components of the multimedia industry.
In fact, while San Jose remains the
high-tech capital of California, San
Francisco is adding high-tech jobs at a
faster pace, according to the
California Cybercities report issued by
the American Electronics Association.
San Francisco’s Multimedia Gulch has
continued to grow as a center for
Internet-content and software firms.
(San Francisco Chamber of Commerce web
page, accessed January 3, 2000)
All the new projects are clustered in
the northeast section of an area known
as “south of Market,” which lies south
of Market Street, the city’s main
downtown commercial corridor. The
burgeoning district is home to most of
the software, multimedia and Internet
companies that have quickly become a
major force in the city’s economy. One
part of the district has earned the
nickname Multimedia Gulch.
(The New York Times, August 29, 1999)
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San Francisco’s Multimedia Gulch
continued its rapid rise as a center
for Internet-content and software
firms....
(The San Francisco Chronicle, October
6, 1998)
...Multimedia Gulch, a ten-square-block
area of converted warehouses that burst
with software companies specializing in
CD-ROMs, Internet services and the
like.
(City Journal, Autumn 1998)
Welcome to the cultural hub of San
Francisco’s trendy interactive media
district, otherwise known as Multimedia
Gulch. In the half-decade since
software companies began migrating
north from sprawling Silicon Valley
into converted warehouse space in this
condensed 10-square-block area, San
Francisco has overtaken its southern
suburban neighbor as the more popular
home of interactive media, a catchall
label that has come to mean everything
from Internet service companies and Web
site developers to interactive game
makers and CD-ROM publishers.
(The New York Times, March 2, 1998)
Multimedia was identified in a Coopers
& Lybrand study prepared for the summit
as the fastest-growing sector of San
Francisco’s economy....
(The San Francisco Examiner, February
28, 1998)
Given the primary geographic significance of the term “San
Francisco” (or “SANFRANCISCO” as a unitary term),2 and the
2 Applicant’s depiction of the mark as one term instead of two
terms does not detract from the primary geographic significance
of the mark as a whole.
Ser No. 75251068
8
fact that the city enjoys a rapidly growing multimedia
industry, we find that consumers will indeed make a
goods/place (computer software/San Francisco) association.
In our view, the evidence establishes that consumers would
expect computer software to have their origin in the city
of San Francisco. Applicant’s insistence that “it is not
San Francisco that is associated with computer software but
only the small portions of it designated as Multimedia
Gulch and/or South of Market” misses the mark. The simple
fact remains that these locations are within the city of
San Francisco and, according to press reports, have
garnered some notoriety in the industry.
Applicant’s arguments and evidence do not compel a
contrary result in this case. In making our decision in
this appeal, we have considered the updated editions of
geographical dictionaries and gazetteer supplied by
applicant. In doing so, we have noted, as cited by
applicant, that the more recent texts do not list
“computers” or related products and services as emanating
from San Francisco. The absence of such products from the
list of goods made in San Francisco does not trouble us
inasmuch as the location does not need to be “known for”
the goods at issue for us to affirm the refusal. In re
Loew’s Theatres, Inc., supra at 867; and In re Pan-O-Gold
Ser No. 75251068
9
Baking Co., 20 USPQ2d 1761 (TTAB 1991). In any event, the
Examining Attorney’s evidence outweighs the absence of an
entry for computer-type goods under the listing for “San
Francisco” in geographical reference publications.
The fact that applicant’s “computer software for use
in the creation of other software using object oriented
frameworks” is purchased and used by sophisticated
purchasers, such as computer programmers, is also not a
persuasive argument. In this connection, applicant
submitted the form declarations of five individuals who are
in the software field. The individuals set forth their
educational backgrounds and job responsibilities, with each
one attesting to his or her company’s licensing of
applicant’s software from applicant under the applied-for
mark. The declarants then stated the following3:
I am aware that San Francisco is the
name of a city located in California.
The city of San Francisco is not
associated in general or in the
computer industry with computer
software. The Silicon Valley, which is
a region in Santa Clara Country located
between San Jose and Palo Alto, is
associated with computer technology.
The Silicon Valley, however, does not
include the city of San Francisco, and,
in the industry, it is well known that
3 The declarants refer to applicant’s mark as SAN FRANCISCO
rather than SANFRANCISCO. Applicant’s drawing was amended
contemporaneously with the filing of the declarations.
Ser No. 75251068
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computer software associated with the
Silicon Valley is not associated with
San Francisco. Because people in the
computer industry do not associate the
city of San Francisco with the
production of computer software, they
will not and have not assumed that
IBM’s SAN FRANCISCO software is
produced in the city of San Francisco.
Accordingly, I have not been deceived
as to the origins of IBM’s SAN
FRANCISCO software. I have never seen
anyone so deceived, nor do I believe
there would be the possibility of such
deception.
In my opinion, the term SAN FRANCISCO
has no significance in connection with
computer software, except to indicate
IBM’s SAN FRANCISCO software.
Firstly, we concur with the Examining Attorney’s
observation that “the declarants are all licensees of the
applicant’s software and therefore have an established
relationship with the applicant which may color their
opinions.” (brief, p. 13) Secondly, we simply find that
the other evidence of record, which clearly indicates that
San Francisco is a location of origin of computer software,
outweighs the form declarations. As for purchaser
sophistication, we do not agree that this necessarily
weighs in applicant’s favor. This sophistication does not
detract from what we perceive to be the likely reaction of
Ser No. 75251068
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a goods/place association upon encountering the mark
SANFRANCISCO for software.
Decision: The refusal to register is affirmed.
Ser No. 75251068
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