JT Tobacco-nists

Trademark Trial and Appeal Board

May 22, 2001

No. 75598351 (T.T.A.B. May. 22, 2001)

5/22/01
GDH/gdh
Paper No. 12
UNITED STAT
Tradem
I
S
Katheryn A. Andresen of
Tobacconists.
Jon Schiffrin, Trademar
(Tomas Vlcek, Managing
Before Seeherman, Hohei
Judges.
Opinion by Hohein, Admi
JT Tobacconis
Minnetonka, Minnesota,
mark "MINNESOTA CIGAR C
of precious metal; [and
Registration
2(e)(2) of the Trademar
1 Ser. No. 75/598,351, fi
fide intention to use suc
application contains the
the exclusive right to us
from the mark as shown."
unacceptable in that it r
will not be given any fur
Belvedere Int'l Inc., 950
Cir. 1991); In re MCI Com
(Comm'r Pats. 1991); and
IS C
THIS DISPOSITION
ITABLE AS PRECEDENT
OF THE T.T.A.B.ES PATENT AND TRADEMARK OFFICE
______
ark Trial and Appeal Board
______
n re JT Tobacconists
______
erial No. 75/598,351
______
Lockridge Grindal Nauel P.L.L.P. for JT
k Examining Attorney, Law Office 115
Attorney).
______
n and Chapman, Administrative Trademark
nistrative Trademark Judges:
ts, a Minnesota corporation located in
has filed an application to register the
OMPANY" for "cigars; cigar cases not made
] humidors".1
has been finally refused under Section
k Act, 15 U.S.C. §1052(e)(2), on the
led on December 2, 1998, which alleges a bona
h term in commerce. As filed, the
following "disclaimer": "No claim is made to
e [Minnesota], [Cigar] and [Company] apart
However, inasmuch as the "disclaimer" is
esults in a disclaimer of the entire mark, it
ther consideration. See, e.g., Dena Corp. v.
F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed.
munications Corp., 21 USPQ2d 1534, 1537-38
TMEP §§1213.01(c) and 1213.07.
Ser. No. 75/598,351
2
ground that, as applied to applicant's goods, the mark "MINNESOTA
CIGAR COMPANY" is primarily geographically descriptive of them.
Applicant has appealed. Briefs have been filed,2 but
an oral hearing was not requested. We affirm the refusal to
register.
2 Applicant, in its initial brief, for the first time has referred to
several third-party registrations in support of an equitable argument
that registration is warranted herein because "[t]he Patent &
Trademark Office has already registered similar names." The Examining
Attorney, in his brief, has properly objected to consideration of such
registrations, noting that the Board does not take judicial notice of
registrations residing in the U.S. Patent and Trademark Office
("USPTO"). It is settled, in this regard, that a mere list of third-
party registrations "is insufficient to make them of record." See,
e.g., In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974). Instead, the
proper procedure for making information concerning third-party
registrations of record is to submit either copies of the actual
registrations or the electronic equivalents thereof, i.e., printouts
of the registrations which have been taken from the USPTO's own
computerized database. See, e.g., In re Consolidated Cigar Corp., 35
USPQ2d 1290, 1292 n.3 (TTAB 1995); In re Smith & Mehaffey, 31 USPQ2d
1531, 1532 n.3 (TTAB 1994); and In re Melville Corp., 18 USPQ2d 1386,
1388 n.2 (TTAB 1991). Moreover, and in any event, the Examining
Attorney also correctly points out that applicant's reference to such
registrations is untimely under Trademark Rule 2.142(d) and that, by
referring thereto "at the appeal stage, applicant is attempting to
introduce evidence that cannot be controverted by the examining
attorney at this late stage." Undaunted, applicant has submitted with
its reply brief printouts from USPTO records of the third-party
registrations upon which it attempts to rely, including registrations
for such marks as "MANHATTAN CIGAR COMPANY" for cigars, cigar cases
and holders not of precious metal, and humidors, "MIAMI CIGAR &
COMPANY" and design and "MIAMI CIGARS & COMPANY" for wholesale cigar
distributorship services, "SAINT LOUIS CIGAR COMPANY" and design for
retail and wholesale cigar distributorship services and "MEMPHIS CIGAR
CO." and design for humidors and other smoker's articles. While we
have not otherwise considered such evidence since, as the Examining
Attorney properly points out, it is untimely under Trademark Rule
2.142(d), it is noted that, with the exception of the single
registration for "MANHATTAN CIGAR COMPANY," the third-party
registrations favor the Examining Attorney's position inasmuch as such
registrations issued pursuant to the provisions of Section 2(f) of the
Trademark Act, 15 U.S.C. §1052(f), and/or contain disclaimers of the
particular geographical terms as well as the words "CIGAR(S)" and
"COMPANY" (or the abbreviation therefor). Likewise while we have
given no consideration, because its submission is untimely, to the
copy accompanying applicant's reply brief of the "Minnesota Department
of Trade and Economic Development's annual report § 4.8 listing
products grown in the State of Minnesota," we observe that
Ser. No. 75/598,351
3
As a general proposition, in order for registration of
a mark to be properly refused on the ground that it is primarily
geographically descriptive of an applicant's goods or services,
it is necessary to establish that (i) the primary significance of
the mark is that of the name of a place generally known to the
public and (ii) that the public would make a goods/place or
services/place association, that is, believe that the goods or
services for which the mark is sought to be registered originate
in that place. See, e.g., University Book Store v. University of
Wisconsin Board of Regents, 33 USPQ2d 1385, 1402 (TTAB 1994); and
In re California Pizza Kitchen Inc., 10 USPQ2d 1704, 1705 (TTAB
1988), citing In re Societe Generale des Eaux Minerales de Vittel
S.A., 824 F.2d 957, 3 USPQ2d 1450, 1452 (Fed. Cir. 1987).
Provided that these conditions are met, and the goods or services
come from the place named by or in the mark, the mark is
primarily geographically descriptive.
Moreover, where there is no genuine issue that the
geographical significance of a term is its primary significance,
and where the geographical place named by the term is neither
obscure nor remote, a public association of the goods or services
with the place may ordinarily be presumed from the fact that the
applicant's goods or services come from the geographical place
named in the mark. See, e.g., In re California Pizza Kitchen
Inc., supra; and In re Handler Fenton Westerns, Inc., 214 USPQ
848, 850 (TTAB 1982). In addition, the presence of generic or
consideration thereof would make no difference in the outcome of this
appeal.
Ser. No. 75/598,351
4
highly descriptive terms in a mark which also contains a
primarily geographically descriptive term does not serve to
detract from the primary geographical significance of the mark as
a whole. See, e.g., In re Cambridge Digital Systems, 1 USPQ2d
1659, 1662 (TTAB 1986); and In re BankAmerica Corp., 231 USPQ
873, 875 (TTAB 1986).
In response to the first Office action, applicant's
former attorney stated that "[t]he products which will be sold
with the proposed mark will be either packaged or produced in
Minnesota." Applicant's current attorney, in its initial brief,
ratifies such statement by asserting that applicant has "begun
selling its goods on the internet under the domain name:
www.minnesotacigarcompany.com" and "confirming that the goods
were at a minimum packaged and shipped from Minnesota."
Applicant admits, therefore, that "the mark identifies the point
of origin of the goods." Applicant further acknowledges in its
initial brief that its "previous attorney ... made the inartful
statement [that] 'the primary significance of the mark is to
identify the point of origin of the goods,'" but claims that the
comment was made "in order to counter the assertion that the mark
may be geographically deceptively misdescriptive if the goods
will not originate in Minnesota." Applicant, although notably
without any evidentiary support, additionally asserts on appeal
that "[t]he actual primary significance [of the mark] is to
suggest a level of excellence in procuring top quality cigars and
cigar related products."
Ser. No. 75/598,351
5
Applicant also argues, as perhaps its strongest point,
that "geographic names are not always associated with the goods
produced [in the location named by the mark,] making the
reference to geography arbitrary" rather than descriptive. In
particular, applicant maintains that:
Tobacco is not grown in Minnesota, nor
is Minnesota associated with the production
of cigars. The potential purchasers
absolutely will not associate the goods,
cigars, with the geographic location. In
addition, the potential and actual purchasers
of the goods, cigars, do not perceive the
mark MINNESOTA CIGAR COMPANY as identifying
the geographic origin of the goods. Here,
the name MINNESOTA CIGAR COMPANY as a
geographic location has no significant
relation to the production of cigars and is
therefore arbitrary.
Applicant accordingly concludes that, when used in connection
with its goods, its mark is not primarily geographically
descriptive.
The Examining Attorney, on the other hand, argues that
the primary significance of applicant's mark, as a whole, is that
of a geographic location and that the purchasing public would
make a goods/place association in that they would believe that
applicant's goods originate in Minnesota. Specifically, as to
the former, the Examining Attorney relies upon the definition of
record of the word "Minnesota," which The American Heritage
Dictionary of the English Language (3rd ed. 1992) lists as:
A state of the Northern United States
bordering on Lake Superior and on Manitoba
and Ontario, Canada. It was admitted as the
32nd state in 1858. First explored by the
French in the mid-17th century, the area
became part of the United States through the
Treaty of Paris (1783) and the Louisiana
Ser. No. 75/598,351
6
Purchase (1803). St. Paul is the capital and
Minneapolis the largest city. Population,
4,387,029.
The Examining Attorney, in light thereof, concludes that the
Ser. No. 75/598,351
7
primary significance of the word "MINNESOTA" in applicant's mark
is geographical in that it designates "a geographic location
which is neither obscure nor remote."
The addition, furthermore, of the words "CIGAR
COMPANY," the Examining Attorney insists, "does not obviate a
determination of geographic descriptiveness" because such words
"are descriptive terms referring to the products provided by the
applicant." The word "cigar," the Examining Attorney notes, is
generic for applicant's cigars and merely descriptive of its
cigar cases and humidors, while the word "company," being an
entity designation, "is generic since the term is incapable of
identifying the applicant's goods and distinguishing them from
those of others." Consequently, and since "[t]he applicant has
not disputed the genericness of CIGAR COMPANY for an ... entity
that is in the business of selling cigars and cigar products,"
the Examining Attorney insists that "the addition of this generic
matter does not remove the mark from being primarily
geographically descriptive."
As to whether the purchasing public would make a
goods/place association by believing that applicant's goods have
their origin in Minnesota, the Examining Attorney cites In re
Nantucket Allserve Inc., 28 USPQ2d 1144 (TTAB 1993), for the
proposition that, where "the primary significance of a mark is to
indicate a geographic location which is neither obscure nor
remote and the applicant's goods are manufactured or produced in
the location indicated, then the public is likely to believe that
the geographic term identifies the place from which the goods
Ser. No. 75/598,351
8
originate." Here, as noted above, not only is Minnesota neither
obscure nor remote, but as the Examining Attorney points out,
applicant has made an "admission that the goods are manufactured
or produced in Minnesota." Therefore, absent sufficient
incongruity between the place named in or by the mark and the
goods marketed thereunder, the Examining Attorney maintains that
a goods/place association must be presumed.
In particular, the Examining Attorney asserts that,
unlike use of the mark "NORTH POLE" for goods, such as bananas,
which could not possibly emanate from that geographic location,
this case is not one in which applicant's goods have no
significant or plausible relation to the State of Minnesota. To
the contrary, the Examining Attorney stresses that applicant's
goods do indeed "emanate from the geographic location [named in
applicant's mark], in that the applicant's business is located in
Minnesota, and the applicant has stated that ... [its] products
are packaged, produced and sold in Minnesota."
With respect to applicant's contention that tobacco is
not grown in Minnesota and that such state is not associated with
the production of cigars and/or cigar products, the Examining
Attorney, citing In re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889
(CCPA 1982), asserts that "[t]here is no requirement that the
place identified in the mark be well known or noted for the goods
... in order to find the existence of a goods/place association"
under the statute. Instead, according to the Examining Attorney:
To establish a goods/place association,
the examining attorney must only show a
"reasonable basis" for concluding that the
Ser. No. 75/598,351
9
public is likely to believe that the mark
identifies the place from which the goods
originate. In re Loew's Theatres, Inc., 226
USPQ 865 (Fed. Cir. 1985). The applicant is
a Minnesota corporation with a business
address in Minnesota. Accordingly, the state
of Minnesota is involved in the production of
cigars by being the business site of the
applicant, especially since the applicant has
stated that they package and produce their
goods in Minnesota. Since applicant is
located in Minnesota and performs business
activities in Minnesota, consumers will have
a reasonable basis to believe that their
goods originate in Minnesota.
We agree with the Examining Attorney that the record in
this case is sufficient to establish a prima facie case that the
mark "MINNESOTA CIGAR COMPANY" is primarily geographically
descriptive of applicant's cigars, cigar cases and humidors.
Here, there simply is no doubt that the geographical significance
of the term "MINNESOTA" is its primary significance, since such
is its sole significance and, as one of the 50 states of the
United States, Minnesota is plainly neither obscure nor remote.
The additional presence in applicant's mark of the generic
terminology "CIGAR COMPANY" for an entity in the business of
selling cigars and related cigar products such as cigar cases and
humidors does not detract from or otherwise alter the fact that
the primary significance of the mark as a whole is geographical.
See, e.g., In re Cambridge Digital Systems, supra; and In re
BankAmerica Corp., supra. Accordingly, the Examining Attorney
has clearly established that the first element of the test for
whether applicant's mark is primarily geographically descriptive
of its goods is met.
Ser. No. 75/598,351
10
For us, the dispositive issue in this case is whether
the second prong of the primarily geographically descriptive test
is satisfied, that is, would the purchasing public for
applicant's goods make a goods/place association by believing
that the goods for which the mark is sought to be registered
originate in Minnesota. We find that they would, inasmuch as a
public association of applicant's goods with the State of
Minnesota may be presumed from the fact that, as conceded by
applicant, its goods "at a minimum [are] packaged and shipped
from Minnesota" and thus such term identifies the point of origin
of the goods. See, e.g., In re California Pizza Kitchen Inc.,
supra; and In re Handler Fenton Westerns, Inc., supra. There is
simply no support for applicant's assertion that the primary
significance of its mark "is to suggest a level of excellence in
procuring top quality cigars and cigar related products."
Applicant, moreover, has offered nothing, by way of argument or
evidence, to demonstrate a sufficient incongruity between the
place named in applicant's mark and the goods marketed
thereunder.
Specifically, as to applicant's principal contention
that its mark as a whole is arbitrary because, inasmuch as there
is nothing to show that tobacco is grown in Minnesota or that
such state is known for the production of tobacco products, there
is no significant relationship between the State of Minnesota and
the production of tobacco products, we note that cigars, cigar
cases and humidors, unlike tobacco, are manufactured products
which could have their origin practically anywhere. Therefore,
Ser. No. 75/598,351
11
while the purchasing public for applicant's goods may be unlikely
to assume that the tobacco in applicant's cigars comes from a
Northern state like Minnesota, since tobacco is traditionally
associated with states which have a longer and milder growing
season (such as Virginia and North Carolina), there is nothing in
the record which even suggests that it would be incongruous or
otherwise unexpected for the purchasing public to believe that
products manufactured from tobacco, such as cigars, and/or
containers for tobacco products, such as cigar cases and
humidors, all of which are produced and shipped by applicant from
its place of business in Minnesota, originate in the State of
Minnesota. There is no requirement, as the Examining Attorney
correctly points out, that the State of Minnesota be noted for
cigars and cigar products in order for a mark such as "MINNESOTA
CIGAR COMPANY" to be held primarily geographically descriptive,
and prospective purchasers of applicant's goods would reasonably
believe that applicant's goods, being products manufactured
either from tobacco or for use with tobacco products, originate
in the State of Minnesota, since such state is the geographic
location from which applicant produces and sells its cigars,
cigar cases and humidors. See, e.g., In re Nantucket Allserve
Inc., supra at 1146. Accordingly, we find that a goods/place
association exists in that customers for applicant's goods would
believe that its cigars, cigar cases and humidors are
manufactured in the State of Minnesota and that, because
applicant's goods do indeed come from such state, its mark is
Ser. No. 75/598,351
12
primarily geographically descriptive of its goods within the
meaning of the statute.
Decision: The refusal under Section 2(e)(2) is
affirmed.