Lafayette Street Partners, LLC

Trademark Trial and Appeal Board

Jul 9, 2008

No. 78678314 (T.T.A.B. Jul. 9, 2008)

Mailed:
July 9, 2008
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Lafayette Street Partners, LLC
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Serial No. 78678314
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Susan Upton Douglas and Vanessa Hwang Lui of Fross Zelnick
Lehrman & Zissu, P.C. for Lafayette Street Partners, LLC.

Steven Foster, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
_______

Before Kuhlke, Walsh and Mermelstein, Administrative
Trademark Judges.

Opinion by Walsh, Administrative Trademark Judge:

Lafayette Street Partners, LLC (applicant) has applied
to register the mark shown here for “restaurant services.”

THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 78678314
2
Applicant has disclaimed “BRASSERIE.”1
The Examining Attorney finally refused registration on
the grounds that the mark is primarily geographically
deceptively misdescriptive of the identified services under
Trademark Act Section 2(e)(3), 15 U.S.C. § 1052(e)(3).
Applicant appealed. Both applicant and the Examining
Attorney have filed briefs. We reverse.
Before addressing the refusal, we must attend to one
evidentiary objection. The Examining Attorney has objected
to consideration of Exhibit E, attached to applicant’s main
brief, consisting of copies of pages from ZAGATSURVEY 2007
NEW YORK CITY RESTAURANTS on the grounds that the exhibit
was submitted for the first time with the brief. Applicant
has not responded to the objection in its reply brief. The
objection is well taken; the record must be complete at the
time the appeal is filed. See 37 C.F.R. § 2.142(d).
Accordingly, we sustain the objection, and we have not
considered this evidence.
Turning to the refusal, to determine whether the mark
is primarily geographically deceptively misdescriptive we
must consider whether:
… (1) the primary significance of the mark is a
generally known geographic location, (2)

1 Application Serial No. 78678314, filed July 26, 2005, alleging
first use anywhere and first use in commerce on June 1, 2006.
Serial No. 78678314
3
[whether] the consuming public is likely to
believe the place identified by the mark
indicates the origin of the goods [or services]
bearing the mark, when in fact the goods [or
services] do not come from that place, and (3)
[whether] the misrepresentation was a material
factor in the consumer's decision.

In re California Innovations Inc., 329 F.3d 1334, 66 USPQ2d
1853, 1858 (Fed. Cir. 2003). See also In re Les Halles De
Paris J.V., 334 F.3d 1371, 67 USPQ2d 1539 (Fed. Cir.
2003); United States Playing Card Co. v. Harbro LLC, 81
USPQ2d 1537 (TTAB 2006).
In Les Halles, the Federal Circuit discussed the
application of the California Innovations test to services,
in particular, to restaurant services:
In the case of a services-place association,
however, a mere showing that the geographic
location in the mark is known for performing the
service is not sufficient. Rather the second
prong of the test requires some additional reason
for the consumer to associate the services with
the geographic location invoked by the mark. See
In re Municipal Capital Markets, Corp., 51 USPQ2d
1369, 1370-71 (TTAB 1999) (“Examining Attorney
must present evidence that does something more
than merely establish that services as ubiquitous
as restaurant services are offered in the
pertinent geographic location.”). Thus, a
services-place association in a case dealing with
restaurant services, such as the present case,
requires a showing that the patrons of the
restaurant are likely to believe the restaurant
services have their origin in the location
indicated by the mark. In other words, to refuse
registration under section 2(e)(3), the PTO must
show that patrons will likely be misled to make
some meaningful connection between the restaurant
(the service) and the relevant place.
Serial No. 78678314
4

In re Les Halles De Paris J.V., 67 USPQ2d at 1541 (“… the
record does not show that a diner at the restaurant in
question in New York City would identify the region in
Paris [LE MARAIS, the mark] as a source of those restaurant
services.”).
The Board later applied Les Halles and determined that
the mark COLORADO STEAKHOUSE was primarily geographically
deceptively misdescriptive for restaurant services. In re
Consolidated Specialty Restaurants Inc., 71 USPQ2d 1921
(TTAB 2004). The Board found that the evidence in the case
established that Colorado was known for steaks and “… that
‘Colorado steaks’ are featured food items in restaurants
not only within the state of Colorado but outside the state
as well.” Id. at 1927. The Board stated, “Therefore,
consumers will believe, mistakenly, that the steaks served
at applicant's steakhouse restaurants come from Colorado,
when they do not.” Id. at 1927-28. The Board explained
further, “The Examining Attorney's evidence shows that
steaks from Colorado are served in other locations, such
that out-of-state consumers would reasonably believe a
‘Colorado Steakhouse’ served Colorado beef, regardless of
the restaurant's location.” Id. at 1928. Thus, the Board
found that the Examining Attorney had established the
Serial No. 78678314
5
necessary “meaningful connection” and “heightened
association” required by Les Halles.
In the case before us, the Examining Attorney argues
that CHINATOWN is a defined neighborhood in New York City,
that applicant is not located in CHINATOWN but about ½ mile
north of CHINATOWN, that CHINATOWN is known for its
restaurants and Chinese cuisine, and that the location of a
restaurant in Chinatown would be material to a consumer’s
choice of the restaurant.
The Examining Attorney posits that a tourist,
“unfamiliar with the nuances of where the borders of
various New York neighborhoods fall,” encountering the
CHINATOWN BRASSERIE mark may be deceived into thinking that
the restaurant is in Chinatown. Examining Attorney’s Brief
at unnumbered page 13.
Applicant argues that, “… the primary meaning and
significance of the term CHINATOWN is not geographic,” but
that it “… now only suggests a style of Chinese cuisine,
not a neighborhood.” Applicant’s Brief at 4. Applicant
discounts the importance of the fact that a number of
Chinese restaurants are located in Chinatown.
We first consider whether the primary significance of
CHINATOWN, in the context of the CHINATOWN BRASSERIE mark,
is that of a generally known geographic location. We note
Serial No. 78678314
6
the Examining Attorney’s observation that applicant’s
restaurant is within ½ mile of the neighborhood in the
borough of Manhattan referred to as CHINATOWN, a fact which
applicant does not dispute.
Applicant has made of record historical information
related to this neighborhood indicating that the CHINATOWN
neighborhood in Manhattan started on Mott Street, Park,
Pell and Doyer Streets. Wikipedia entry attached to
Applicant’s Response of July 17, 2006. The Chinese
population of the area was about 200 in 1870, 2000 in 1882,
and 7,000 in 1900. Up until the 1970s, the “accepted”
borders of CHINATOWN were generally Canal Street to the
North, The Bowery to the East, Worth Street to the South
and Baxter Street to the West. Id.
Beginning in 1965 the Chinese population in the
neighborhood “exploded” with geographical expansion mainly
to the north. In the process CHINATOWN supplanted most of
Little Italy. In the 1990s the Chinese population expanded
further and also supplanted the Jewish and Hispanic
populations in adjacent neighborhoods in the Lower East
Side. Id. Consequently, the borders of Chinatown have
evolved and expanded. The parties refer to Delancey Street
as the generally accepted border of CHINATOWN to the North
Serial No. 78678314
7
at present. The estimates of the current population within
the neighborhood vary widely from 150,000 to 350,000.
“CHINATOWNS” have also emerged in other New York City
boroughs, for example, in Flushing, Queens and Sunset Park,
Brooklyn, and even in the New York City suburbs. Id.
We have also consulted a number of dictionaries and
other reference works to determine the significance of
CHINATOWN.2 The definition for “Chinatown” in the Columbia
Gazetteer of the World (1998) refers to the neighborhood in
Lower Manhattan known as CHINATOWN and states, “… Once an
8-block area S of Canal St., it now stretches to include
over 65 blocks.” The definition also refers to the “Two
other Chinatowns” in Queens and Brooklyn. The American
Heritage Dictionary of the English Language (4th ed. 2006)
defines “Chinatown” as “a neighborhood or section of a city
that is inhabited chiefly by Chinese people.” In like
manner, The New Oxford American Dictionary (2nd ed. 2005)
defines “Chinatown” as “a district of any non-Chinese town,
esp. a city or seaport, in which the population is
predominantly of Chinese origin.” Thus, there are
“CHINATOWNS” in many cities.

2 The Board may take judicial notice of dictionaries and similar
references. University of Notre Dame du Lac v. J. C. Gourmet
Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703
F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).

Serial No. 78678314
8
On this record we conclude that the primary
significance of CHINATOWN, as used in the CHINATOWN
BRASSERIE mark, is not that of a generally known geographic
location – at least not in the sense intended by the
Trademark Act. The record indicates that “CHINATOWN” is
used generally to refer to neighborhoods with a
predominantly Chinese population. The record indicates
further that, in the case of New York City, the city where
applicant’s restaurant is located, there is more than one
CHINATOWN. Also, the “CHINATOWN” which is only ½ mile from
applicant’s restaurant, is a consistently-expanding
neighborhood.
Furthermore, contrary to the Examining Attorney’s
argument, this is not like those cases where there is more
than one place known by the same name. Cf. In re Loew's
Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir.
1985). This is not a case where there is more than one
city named “Durango” or “Paris” and the goods are
associated with one, in particular. Any CHINATOWN, by
definition, would have Chinese businesses, including
restaurants. The point is that the Chinese restaurants
located in the CHINATOWN in Manhattan, and for that matter
in any other CHINATOWN, are not associated with a
particular food, like steaks, or a style or quality of
Serial No. 78678314
9
cuisine that would distinguish them from Chinese
restaurants in places not identified as CHINATOWN.
In addition, CHINATOWN is not the only element in the
mark. The entire word mark is CHINATOWN BRASSERIE, and
there are also design elements in the mark. The Examining
Attorney dismisses the significance of BRASSERIE in the
mark arguing that it is simply a word meaning “a restaurant
serving alcoholic beverages, especially beer, as well as
food” and that there is no incongruity in the combination
of CHINATOWN and BRASSERIE. Examining Attorney’s Brief at
19. On the other hand, applicant argues that BRASSERIE “…
evokes European cuisine, and is inherently incongruous with
a location in Chinatown.” Applicant’s Brief at 10.
There is an obvious incongruity in this combination.
The Merriam-Webster’s Collegiate Dictionary (11th ed. 2003)
defines “brasserie,” in relevant part, as “an informal usu.
French restaurant serving simple hearty food.”3 Taken as a
whole, the mark suggests a truly “incongruous” combination
of Chinese and other non-Chinese cuisine. The menu for
applicant’s restaurant in the record reflects that same
incongruous combination. It is this suggestive meaning,
and not that of a geographical location, which the entire

3 University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ at 596.
Serial No. 78678314
10
mark projects. This lends further support to our
conclusion that the primary significance of the mark is not
that of a generally known geographic location. Cf. In re
International Taste Inc., 53 USPQ2d 1604, 1605 (TTAB 2000);
In re Municipal Capital Markets Corp., 51 USPQ2d 1369, 1371
(TTAB 1999); In re Cotter & Co., 228 USPQ 202, 205 (TTAB
1985).
Accordingly, we conclude that CHINATOWN, as used in
the CHINATOWN BRASSERIE mark, is not a “geographic
location” for purposes of Section 2(e)(3).
We could end our analysis at this point and conclude,
based on our conclusion regarding this factor alone, that
the mark is not primarily geographically deceptively
misdescriptive of the services. However, it is useful in
this case, for the sake of completeness, to consider the
other factors in the Les Halles test; those factors further
support our overall conclusion that the CHINATOWN BRASSERIE
mark is not primarily geographically deceptively
misdescriptive.
Turning to the issue of a possible services-place
association, we conclude that there is none here. The Les
Halles opinion makes the obvious and very practical
observation that a customer sitting in a restaurant in New
York will not believe that he or she is in Paris. In re
Serial No. 78678314
11
Les Halles De Paris J.V., 67 USPQ2d at 1541. Consequently,
the Court directs that we find some other “meaningful
connection” between the restaurant services and the place
named to sustain a refusal under Section 2(e)(3). The
Court suggests, “For example, the PTO might find a
services-place association if the record shows that
patrons, though sitting in New York, would believe the food
served by the restaurant was imported from Paris, or that
the chefs in New York received specialized training in the
region in Paris.” Id. In the Colorado Steakhouse case, as
we noted above, the Board found that consumers might make a
meaningful connection because they may believe that the
steaks served in the restaurant, not located in Colorado,
came from Colorado which is known for its steaks. In re
Consolidated Specialty Restaurants Inc., 71 USPQ2d at 1927.
We find no such connection here. There is no
connection such as those discussed in either the Les Halles
or the Colorado Steakhouse cases. The Examining Attorney
has provided evidence to show that the CHINATOWN in Lower
Manhattan has many Chinese restaurants and that those
restaurants are noted for their Chinese cuisine. However,
we fail to see how someone dining in a restaurant ½ mile
away would connect the services in applicant’s restaurant
in a meaningful way with the services offered in
Serial No. 78678314
12
restaurants in CHINATOWN, however that is defined. We have
no evidence that the CHINATOWN in Lower Manhattan, nor any
other one, is associated with a distinct type or style of
Chinese cuisine. Neither the quality, nor the
authenticity, nor any other feature of the restaurant
services offered within the “borders” of CHINATOWN would
necessarily differ in a meaningful way from the same
services offered ½ mile away at another restaurant
featuring Chinese cuisine. While a tourist may be confused
about the location of the restaurant and/or the nuances of
the neighborhood borders, this is not relevant to any
services-place association delineated in Les Halles.
Therefore, we conclude, on this record, that there is
no services-place association between the services and the
mark at issue here. Furthermore, it also logically follows
that, since we find no misrepresentation, we also conclude
that there is no material effect on the purchasing
decision.
For the record, we have given full consideration to
all evidence and arguments presented here, including that
evidence and those arguments we have not specifically
discussed.
Serial No. 78678314
13
In sum, we conclude that the CHINATOWN BRASSERIE mark
is not primarily deceptively misdescriptive of restaurant
services.
Decision: We reverse the refusal under Section
2(e)(3).