JH Thompson Enterprises, Inc.

Trademark Trial and Appeal Board

Jan 5, 2001

No. 75470627 (T.T.A.B. Jan. 5, 2001)

1/5/00
Paper No. 13
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re JH Thompson Enterprises, Inc.
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Serial No. 75/470,627
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Michael S. Culver of Oliff & Berridge, PLC for JH Thompson
Enterprises, Inc.
Douglas M. Lee, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______
Before Cissel, Holtzman and Rogers, Administrative
Trademark Judges.
Opinion by Cissel, Administrative Trademark Judge:
On April 20, 1998, applicant, a corporation of
Pennsylvania located in Erie, Pennsylvania, filed the
above-referenced application to register the mark “GREAT
LAKES INSTITUTE OF TECHNOLOGY” on the Principal Register
for “educational services, namely, conducting career
training programs in the cosmetology, business and allied
health fields,” in Class 41. The application was based on
applicant’s assertion that it possessed a bona fide
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/470,627
2
intention to use the mark in commerce in connection with
the specified services.
The Examining Attorney refused registration under
Section 2(e)(2) of the Lanham Act on the ground that the
mark applicant seeks to register is primarily
geographically descriptive of applicant’s services. In
support of the refusal of registration, the Examining
Attorney included a copy of an entry from Webster’s New
Geographical Dictionary for “Erie,” the place where
applicant is located, as “a city and port of entry” in the
northwest corner of Pennsylvania, “on Lake Erie.” The
Examining Attorney concluded that the primary significance
of the term “GREAT LAKES” is geographic, and that because
applicant’s services would emanate from the geographical
place named in the mark, an association between the
services and the place would be presumed. Also included
with the refusal were copies of the results of a
computerized search demonstrating the descriptive
significance of the term “INSTITUTE OF TECHNOLOGY” in
connection with educational services recited in the
application.
Applicant responded to the Examining Attorney’s first
Office Action with both an amendment to allege use since
September 7, 1998 and argument that the mark is not
Ser No. 75/470,627
3
geographically descriptive because “[a]pplicant does not
provide its services in or on the Great Lakes. Concededly,
Applicant is located near the Great Lakes, but proximity to
a geographic location is not enough to support a refusal
under Trademark Act Section 2(e)(2)…” Applicant cited In
re Gale Hayman, Inc., 15 USPQ2d 1478 (TTAB 1990) for the
proposition that applicant’s location near one of the Great
Lakes is insufficient to render its mark geographically
descriptive.
The Examining Attorney accepted applicant’s amendment
to allege use, but was not persuaded by applicant’s
arguments as to the geographic descriptiveness of the mark,
so the refusal to register under Section 2(e)(2) the Act
was continued and made final. Submitted with the final
refusal were copies of stories retrieved from the Nexis

database of published articles which use “Great Lakes” as
the name of the region in which Erie, Pennsylvania is
located. Also included with the final refusal were copies
of five United States trademark registrations wherein the
term “GREAT LAKES” is disclaimed. The Examining Attorney
also pointed to the specimens of use submitted by
applicant, which indicate that the term “GREAT LAKES”
refers to a geographic region. The specimens state that
“[i]n September 1998, in recognition of the regional
Ser No. 75/470,627
4
service area of the institution, it (applicant) became
Great Lakes Institute of Technology.” The specimens go on
to note that applicant “offers career programs to the
residents of the Great Lakes area.”
Applicant timely filed a Notice of Appeal, along with
a request for reconsideration. Action on the appeal was
suspended and the application was remanded to the Examining
Attorney for reconsideration. He did not change his
position, however. Included with his action on applicant’s
request for reconsideration were additional materials
retrieved by the Examining Attorney from various websites
which show use of the term “GREAT LAKES” as the name of the
region in which applicant is located.
Both applicant and the Examining Attorney filed
briefs. Attached as exhibits to applicant’s brief were
copies of third-party registrations argued by applicant to
support its contention that the Office does not
consistently require disclaimer of the term “GREAT LAKES,”
but the Examining Attorney properly objected to our
consideration of this evidence because it was not timely
submitted. The record closes with the filing of the Notice
of Appeal. Trademark Rule 2.142(d) provides the procedure
for making of record additional evidence that was not
previously available, but applicant did not comply with
Ser No. 75/470,627
5
that rule. Moreover, it does not appear that the materials
submitted with applicant’s brief were unavailable before
the filing of the appeal. The Examining Attorney’s
objection is sustained. We have not considered this
evidence.
Applicant did not request an oral hearing before the
Board.
Turning, then, to the merits of the issue raised by
this appeal, we note that under Section 2(e)(2) of the
Lanham Act, registration must be refused when the primary
significance of the mark is that of a place generally known
to the public, and the public would make an association
between the goods or services specified in the application
and the place named in the mark, i.e., they would believe
that the goods or services set forth in the application
originate in that place. See: In re California Pizza
Kitchen, 10 USPQ2d 1704 (TTAB 1989). See also: In re
Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998); In re Handler
Fenton Westerns, Inc., 214 USPQ 848 (TTAB 1982). The
addition of a generic or highly descriptive term to a
geographic term does not result in a mark which is not
subject to refusal under Section 2(e)(2) of the Act. In re
Cambridge Digital Systems, 1 USPQ2d 1659 (TTAB 1986); In
re BankAmerica Corp., 231 USPQ 873 (TTAB 1986).
Ser No. 75/470,627
6
We hold that the refusal to register in the case at
hand is appropriate because “GREAT LAKES INSTITUTE OF
TECHNOLOGY” is a combination of a generic term, “INSTITUTE
OF TECHNOLOGY,” with a term whose primary significance is
that of a geographic place, “GREAT LAKES.” Because
applicant’s services do, in fact, emanate from the place
named in applicant’s mark, the association between the
services and the place by customers of applicant’s services
can be presumed.
Applicant’s principal argument is that its mark is not
geographically descriptive because applicant’s services do
not come from the geographic place named in the mark, in
that “applicant does not provide its services in or on the
Great Lakes.” (brief, p.2) Applicant contends that for
this reason, the Examining Attorney has not established
that consumers would make any association between the Great
Lakes and applicant’s services.
In the Hayman case, supra, cited by applicant in
support of its position, the Board held that although that
applicant’s location (Century City) was close to the
geographic location named in the mark (SUNSET BOULEVARD), a
goods/place association had not been established. In the
other case argued by applicant, Ex Parte Pacific Coast
Aggregates, Inc., 91 USPQ 210 (Comm’r Pats. 1951), the
Ser No. 75/470,627
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Commissioner held that while “PACIFIC” may not have primary
significance as a geographical term, the combination
“PACIFIC COAST” did, with respect to “any enterprise
operating on the Pacific Coast.” Applicant’s position is
that if its mark were “GREAT LAKES REGION INSTITUTE OF
TECHNOLOGY,” refusal under Section 2(e)(2) of the Act might
be appropriate, but that because the word “REGION” is not
part of applicant’s mark, the refusal to register should be
reversed.
We disagree. The record before us in this appeal
establishes that applicant’s mark combines a generic term
for the services recited in the application with a term
with primary geographic significance. The record shows
that applicant is located in Erie, Pennsylvania, that Erie,
Pennsylvania is part of the Great Lakes region, and that
“INSTITUTE OF TECHNOLOGY” is a generic term in connection
with the services set forth in the application. Simply
put, the evidence amply demonstrates that the term “GREAT
LAKES” is the name of a place, and even though that place
is large enough to be termed a “region,” the term
nonetheless names the place, and it is that place where
applicant’s services are rendered. The fact that the mark
sought to be registered does not include the term “REGION,”
is not fatal to the refusal to register under the Act.
Ser No. 75/470,627
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Nor is the fact that applicant does not render its
services in Lake Erie or on Lake Erie fatal to the refusal
to register. As the geographical dictionary entry made of
record by the Examining Attorney makes clear, it is common
practice to refer to a location which is near a lake as
being “on” the lake. (Erie was described as a city “on
Lake Erie.”) Also, as noted above, applicant’s own
materials promote the connotation of the term “GREAT LAKES”
as referring to the region, rather than to the Lakes
themselves. Applicant’s explanation of its change of name
from the “Private Academy for Career Training” to the
“Great Lakes Institute of Technology” refers to
“recognition of the regional service area of the
institution” and offering career programs to the residents
of “the Great Lakes area.” As noted by the Examining
Attorney, it is significant that applicant did not state
that the new name was selected to refer to the five lakes
themselves, but rather because the name refers to the area
of land surrounding them.
The Examining Attorney distinguishes the two cases
cited by applicant in support of the proposition that by
selecting a mark which names a place which is only near
where applicant renders its service, applicant may avoid
the refusal of registration. Unlike the facts in Hayman,
Ser No. 75/470,627
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in the case at hand, the applicant is located within the
geographic place named in the mark, not merely near it. In
the Pacific Coast case, although the Commissioner noted
that the word “PACIFIC,” by itself, is so broad that it
might not be primarily geographically descriptive, the
words “PACIFIC COAST” were held to be geographically
descriptive in connection with a business which operated in
that location. Just as the term “PACIFIC COAST” names a
geographic location with some particularity, the record in
the case at hand shows that “GREAT LAKES” identifies a
specific location (which includes the place where applicant
renders its services) with some degree of specificity.
In summary, when the mark here sought to be registered
is considered in its entirety, its primary significance in
connection with the services recited in this application is
geographic. Accordingly, the refusal to register under
Section 2(e)(2) of the Act is affirmed.