Les Boulangers Associates, Inc.

Trademark Trial and Appeal Board

Oct 23, 1998

No. 75012726 (T.T.A.B. Oct. 23, 1998)

Paper No. 9
PTH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB OCT 23, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Les Boulangers Associates, Inc.
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Serial No. 75/012,726
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Bruce E. O’Connor of Christensen, O’Connor, Johnson &
Kindness for Les Boulangers Associates, Inc.
Montia O. Givens, Trademark Examining Attorney, Law Office
101 (R. Ellsworth Williams, Managing Attorney).
_______
Before Cissel, Seeherman and Hairston, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Les Boulangers Associates, Inc. has filed an
application to register the mark PARIS SNACKS (SNACKS is
disclaimed) for goods which were subsequently identified as
“frozen bread and pastry products, namely, ready-to-eat
breadsticks, focaccia, croissants, crepes, scones, puff
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pastry, strudel pie and tart pastry shells, cookies, and
bread having a meat, cheese, and/or vegetable filling.”1
Registration has been finally refused under Section
2(a) of the Trademark Act on the ground that the mark is
geographically deceptive and, in the alternative, under
Section 2(e)(3) on the ground that the mark is
geographically deceptively misdescriptive. It is the
Examining Attorney’s position that purchasers would
mistakenly believe that applicant’s frozen bread and pastry
products originate in Paris, and that this misunderstanding
would be a material factor in the purchasing decision.
Applicant has appealed. Briefs have been filed, but
no oral hearing was requested.
The test for determining whether a mark is
geographically deceptive is set forth in Institut National
des Appellations D’Origine v. Vintners International Co.
Inc., 958 F.2d 1574, 22 USPQ2d 1190, 1195 (Fed.Cir. 1992).
The test consists of three elements, the first two of which
comprise the test for determining whether a mark is
geographically deceptively misdescriptive. The elements
are as follows:

1 Application Serial No. 75/012,726 filed October 31, 1995; based
on a bona fide intention to use the mark in commerce.
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1. Whether the primary significance of
the mark as it is used is a generally
known geographic place;
2. Whether purchasers are likely to
believe, mistakenly, that the goods
or services sold under applicant’s
mark have their origin in or are
somehow connected with the geographic
place named in the mark and, if so;
3. Whether a purchaser’s mistaken belief
as to the geographic origin of the
goods or services would materially
affect the purchaser’s decision
to buy the goods or services sold
under the mark.
At the outset, we note that applicant has stated that
its goods “do not come from, and will not come from,
Paris.” (January 2, 1997 response, p. 6). We should also
note that there is no dispute that Paris is a well-known
geographical place. In urging reversal of the refusal to
register, applicant maintains that its mark PARIS SNACKS is
fanciful and suggestive, and that the term PARIS, as used
in the mark, does not denote geographic origin, but rather
hints at a desirable aura of the products. Further,
applicant argues that purchasers are not likely to believe
that frozen bread and pastry products originate in France,
and that the Trademark Examining Attorney has not made out
a goods/place association between Paris and applicant’s
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frozen bread and pastry products. In particular, applicant
contends that:
Although the Trademark Attorney included
excerpts from over one hundred articles
regarding baked goods and various locations
in France, only two of these articles out
of the million of articles searched in
the LEXIS/NEXIS search discussed both
Paris and frozen bakery goods.
(Brief, p. 3)
As correctly noted by the Examining Attorney, to
establish a primarily geographically descriptiveness bar,
the Office must show only a reasonable basis for concluding
that the public is likely to believe the mark identifies
the place from which the goods originate; not that the
place is well known or noted for the specific goods. In
this case, the Examining Attorney has made of record
numerous NEXIS excerpts which demonstrate that Paris is
recognized as a culinary center for, in particular, bread
and pastries. Examples are set forth below:
Established in Paris in 1895, Le Cordon
Bleu is considered the world’s ultimate
cuisine and pastry school, with locations
in Paris, London and Tokyo. (The
Times-Picayune, June 22, 1995);
From bread to pastries to wine, the French
capital offers delicious dining. (Milwaukee
Journal Sentinel, October 15, 1995);
...raves from Eastern reviewers, including
former New York Times food critic Craig
Claiborne, who compared them favorably to
the breads of Paris. (The Seattle Times,
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5
February 1, 1995);
Richard got his start working in the
revered pastry shop of Gaston Lenotre
in Paris, and the training shows
beautifully in his eye-catching plates
and bold flavors. (Sacramento Bee,
November 22, 1995);
Order the country, currant or walnut
breads from Deborah’s Country French
Bread to enjoy the legendary breads
of Paris. Quick-frozen in France, the
country bread is a pale wheat color inside
and has a thick, dark crust . . .
(Chicago Sun-Times, December 4,
1996); and
Originally from Versailles, Philippe
Ducrocq studied in a Parisian culinary
school and worked in Paris pastry shops
before becoming the Beverly Hills Hotel
pastry chef in the late 1980’s. (The
Kansas City Star, January 8, 1997).
In view of the foregoing, we find that the Examining
Attorney has established a prima facie case that the public
would make a goods/place association, that is, that the
public would be likely to believe that frozen bread and
bakery products do originate in Paris. We disagree with
applicant that because its bread and pastry products are
frozen, consumers would be unlikely to believe that such
products originate in Paris. To the contrary, given that
fresh bread and pastry products become stale quickly,
consumers are more likely to believe that bread and pastry
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products sold in the United States come from Paris if such
products are frozen, rather than fresh.
As to applicant’s contention that the use of PARIS in
its mark merely hints at a desirable aura of the products,
we disagree. Here, PARIS projects a primarily geographic
significance inasmuch as applicant has simply combined it
with SNACKS, a highly descriptive/generic term for
applicant’s goods.
In sum, we find that purchasers and prospective
purchasers encountering the mark PARIS SNACKS for frozen
breads and pastry products are likely to believe,
mistakenly as it turns out, that the products have their
origin in Paris.
The final question, then, is whether the geographical
misdescription created by PARIS SNACKS would be material to
the purchase of frozen bread and pastry goods bearing the
mark. We believe that it would. The evidence put forth by
the Examining Attorney demonstrates the fame of Paris as a
culinary center. Its reputation for exceptional breads and
pastries is legendary. Thus, there is no doubt that such
goods emanating from Paris would be more appealing or
desirable to prospective purchasers, and thus, this factor
would be material to the decision to purchase such
Ser No. 75/012,726
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products. See In re Juleigh Jeans Sportswear Inc., 24
USPQ2d 1694 (TTAB 1992).
Decision: The refusal to register under Section
2(e)(3) and 2(a) of the Trademark Act is affirmed.
R. F. Cissel
E. J. Seeherman
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
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