International Taste, Inc.

Trademark Trial and Appeal Board

Jan 7, 2000

No. 75314626 (T.T.A.B. Jan. 7, 2000)

Paper No. 11
BAC
THIS DISPOSITION IS CITABLE
AS PRECEDENT OF THE TTAB JAN. 7, 00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re International Taste, Inc.
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Serial No. 75/314,626
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Dax Alvarez of Blakely, Sokoloff, Taylor & Zafman for
International Taste, Inc.
Teresa A. Lee, Trademark Examining Attorney, Law Office 111
(Craig Taylor, Managing Attorney).
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Before Seeherman, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
International Taste, Inc. has filed an application to
register the mark shown below
Ser. No. 75/314626
2
for “french fries” in International Class 29 and “fast food
restaurants” in International Class 42.1
Registration has been finally refused under Section 6
of the Trademark Act on the basis of applicant’s failure to
comply with a requirement to disclaim the word “HOLLYWOOD.”
Such word, according to the Examining Attorney, is
primarily geographically descriptive of applicant’s goods
and services within the meaning of Section 2(e)(2) of the
Trademark Act, and therefore must be disclaimed.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We reverse.
It is the Examining Attorney’s position that the
primary significance of the term “Hollywood” is that of a
geographic place, specifically, a town in California, as
evidenced by the following definition in The American
Heritage Dictionary (1992)2: “1. A district of Los Angeles,
California. Consolidated with Los Angeles in 1910, it has
long been a film and entertainment center. 2. A city of

1 Application Serial No. 75/314,626, filed June 25, 1997, wherein
applicant alleges a bona fide intent to use the mark in commerce.
Applicant disclaimed the term “fries.”
2 This definition was submitted with the Examining Attorney’s
brief on appeal, along with her request that the Board take
judicial notice of said dictionary definition. The Examining
Attorney’s request for judicial notice is granted. See TBMP
§712.
Ser. No. 75/314626
3
Southeast Florida on the Atlantic Ocean north of Miami
Beach. It is a resort and retirement community with varied
light industries. Population 121,697.” The Examining
Attorney also submitted (i) copies of several third-party
registrations where the term “Hollywood” has been
disclaimed or registered under Section 2(f) on the
Principal Register, or registered on the Supplemental
Register; (ii) copies of several excerpts from the Nexis
database showing that Culver City, California (applicant’s
business location) is located in close proximity to
Hollywood, California; and (iii) a copy of a telephone book
map of the Los Angeles area including Hollywood and Culver
City. The Examining Attorney contends that because Culver
City and Hollywood are close to one another, a public
association of the goods and services with the place named
is presumed.
Applicant argues that the Examining Attorney has
established neither that the term “Hollywood” is primarily
geographical nor that there is a goods and services/place
association. Applicant submitted Webster’s II New College
Dictionary’s (1995) definition of “Hollywood” as “The U.S.
motion-picture industry or the atmosphere attributed to it”
to show that the term “Hollywood” is not primarily
geographical because it has a distinct separate commercial
Ser. No. 75/314626
4
and historical meaning referring to the entertainment
industry in general. In further support of this
contention, applicant refers to one of the Nexis stories
submitted by the Examining Attorney, which reads, in part,
as follows:
Hollywood, the industry, has never been
completely contained by the geographic bounds of
Hollywood, the place. Burbank, Culver City, West Los
Angeles and Beverly Hills have all been, and continue
to be, thriving centers of the Hollywood entertainment
world. Increasingly, Hollywood business is also being
done surfside, in Santa Monica. Los Angeles Times,
August 27, 1995.
The test for primarily geographically descriptive
marks is (1) whether the term sought to be registered
primarily denotes a geographical place to reasonable
purchasers, and (2) if so, whether customers would
associate the goods and/or services with the geographic
place named. See In re Jacques Bernier Inc., 894 F.2d 389,
13 USPQ2d 1725 (Fed. Cir. 1990); In re Societe General des
Eaux Minerals de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450
(Fed. Cir. 1987); and In re Gale Hayman Inc., 15 USPQ2d
1478 (TTAB 1990).
“A mark that has a popular significance apart from its
geographical meaning is not, in most cases, ‘primarily’
geographical.” 2 J. Thomas McCarthy, McCarthy on
Ser. No. 75/314626
5
Trademarks and Unfair Competition, §14:28 (4th Ed. 1999).
And in the case of World Carpets, Inc. v. Dick Littrell’s
New World Carpets, 438 F.2d 482, 168 USPQ 609 (5th Cir.
1971), the Court stated the following with reference to the
Trademark Act: “The word ‘primarily’ should not be
overlooked, for it is not the intent of the federal statute
to refuse registration of a mark where the geographic
meaning is minor, obscure, remote or unconnected with the
goods.”
It seems to us that this case can be disposed of by a
determination of the first question, specifically whether
the term sought to be registered primarily denotes a
geographical place. There is no question that “Hollywood”
is a section of Los Angeles, California (as well as being a
town in Florida). However, in view of the other prominent,
significant meaning of the term “Hollywood” as referring to
the entertainment industry in general, we find that the
Examining Attorney has not established that the primary
significance of the term “Hollywood” is that of a
geographic location in California. That is, the record
does not establish that to the purchasing public the
primary connotation of the term “Hollywood” is the
particular California town and not the general
entertainment industry. Moreover, the star design feature
Ser. No. 75/314626
6
which forms part of applicant’s mark increases the
commercial impression of the term as connoting the
entertainment industry and decreases the connection to the
town of Hollywood, California. See In re Municipal Capital
Markets Corp., 51 USPQ2d 1369 (TTAB 1999) (the mark
COOPERSTOWN for restaurant services held not primarily
geographically deceptively misdescriptive--the majority
opinion stating that the primary significance of the term
COOPERSTOWN is not geographic); In re Sharkey’s Drygoods
Co., 23 USPQ2d 1061 (TTAB 1992) (the mark PARIS BEACH CLUB
for T-shirts and sweatshirts held not geographically
deceptive, because the term PARIS when juxtaposed with
BEACH CLUB is “a facetious rather than a geographic
reference”); and In re Dixie Insurance Company, 223 USPQ
514 (TTAB 1984) (the mark DIXIE for property and casualty
underwriting services held not primarily geographically
descriptive, because the primary significance of the term
DIXIE is not geographical). Cf. In re California Pizza
Kitchen Inc., 10 USPQ2d 1704 (TTAB 1988) (the primary
significance of the term “California” in the mark
CALIFORNIA PIZZA KITCHEN for restaurant services held
geographical – the terms PIZZA KITCHEN were disclaimed); In
re Opryland USA Inc., 1 USPQ2d 1409 (TTAB 1986) (the
primary significance of the term “Nashville” in the mark
Ser. No. 75/314626
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THE NASHVILLE NETWORK for television program production
services and distribution of television programming to
cable television systems held geographical); and In re The
Cookie Kitchen, Inc., 228 USPQ 873 (TTAB 1986) (the primary
significance of the term MANHATTAN for cookies held
geographical).
There are several registered marks in which the word
“Hollywood” is disclaimed (or the marks are registered
under Section 2(f) or on the Supplemental Register); on the
other hand, applicant has pointed out two registrations
with no disclaimer of the term “Hollywood.” We acknowledge
that the Office has apparently treated the word “Hollywood”
inconsistently; however, while the Office strives for
consistency, the Board must decide each case on its own
facts and record. See In re Consolidated Foods Corp., 200
USPQ 477 (TTAB 1978). With respect to the third-party
registrations which include disclaimers of the term
“Hollywood,” we do not have before us any information from
the registration files as to why an Examining Attorney
required and/or why the applicant/registrant offered such
disclaimers.
To the extent that there is any doubt as to the
primary significance of the term “HOLLYWOOD,” we resolve
Ser. No. 75/314626
8
doubt in favor of the applicant. See In re John Harvey &
Sons Ltd., 32 USPQ2d 1451, 1455 (TTAB 1994).
In view of our finding that the term “Hollywood” is
not primarily a geographical term, we need not reach the
question of whether the Examining Attorney has established
a goods and services/place association between the term and
the applied-for goods and services.
Decision: The requirement under Section 6 for a
disclaimer of the term “Hollywood” is reversed, and the
application will be forwarded for publication in the
Official Gazette.
E. J. Seeherman
P. T. Hairston
B. A. Chapman
Administrative Trademark Judges,
Trademark Trial and Appeal Board